UKIPO Trade Mark Tribunal Costs: What You Need To Know
The Trade Mark Tribunal at the UK Intellectual Property Office (UKIPO) handles disputes relating to UK trade mark registrations, including trade mark opposition, invalidity, and revocation proceedings. For many brand owners, the UKIPO tribunal offers a relatively quick, cost-effective and streamlined alternative to court litigation as UKIPO trade mark tribunal costs are usually fixed.
UKIPO Trade Mark Tribunal Costs and the Scale of Costs
A key consideration in any UK trade mark opposition or invalidity proceeding is cost exposure. In most cases, the UKIPO awards costs according to a published scale of costs, which are typically payable by the unsuccessful party.
The UKIPO takes a "contribution, not compensation" approach to trade mark tribunal costs. This means costs awards are intended to contribute towards a party's legal expenses, rather than reimburse them in full. The benefit of this approach is greater transparency, allowing parties to better understand both their potential liability and what they may be able to recover if successful.
Tribunal Practice Notice 1/2023: Guidance on UKIPO Costs
The applicable UKIPO scale of costs is set out in Tribunal Practice Notice (TPN) 1/2023: Costs in proceedings before the Comptroller. This guidance is essential reading for anyone considering bringing or defending proceedings before the UKIPO Trade Mark Tribunal.
TPN 1/2023 explains the typical costs awarded at each stage of proceedings. By way of example, a successful party may recover between £250 and £750 for preparing a statement and considering the other side's evidence or submissions. While modest, these figures provide useful clarity when budgeting for a trade mark dispute.
Off-Scale Costs at the UKIPO and Unreasonable Behaviour
Although the scale of costs applies in the vast majority of cases, the UKIPO retains discretion to award "off-scale costs" where a party has behaved unreasonably. TPN 1/2023 makes clear that such awards are exceptional and designed to ensure proceedings are dealt with fairly and proportionately.
Guidance on when off-scale costs may be appropriate can be found in the long-standing decision of Rizla Ltd's Application [1993] RPC 365. In that case, the tribunal confirmed that compensatory costs may be awarded where proceedings are brought without a genuine belief that they are legally sound, or where the process is misused for purposes other than resolving a genuine trade mark dispute.
Apple v Radu: A Recent UKIPO Decision on Off-Scale Costs
These principles was applied recently in decision BL O/1192/24, involving Apple and Mr Radu. Mr Radu had brought trade mark invalidity proceedings against two of Apple's iPhone trade marks. Apple successfully applied to have those proceedings struck out as an abuse of process.
Following the strike-out, the Hearing Officer considered the issue of UKIPO trade mark tribunal costs in a separate decision. Apple relied on Rizla, and argued that the proceedings had been brought unreasonably.
While not all of Apple's arguments were pursued at the hearing, the Hearing Officer agreed that Mr Radu's conduct was unreasonable, finding that Mr Radu had attempted to use the UKIPO process to pressure Apple into surrendering its iPhone trade marks to clear the way for his own registrations. Although Apple did not recover its full claimed costs of £27,606, it was awarded off-scale costs of £19,389, a significant departure from the usual scale.
What This Means for Trade Mark Owners and Applicants
This decision is a valuable reminder for users of the UKIPO Trade Mark Tribunal. It demonstrates how Hearing Officers assess applications for off-scale costs, illustrates the continued relevance of Rizla, and highlights the financial risks of pursuing trade mark proceedings for improper or unreasonable purposes.
For brand owners, the message is clear: while the UKIPO offers a cost-effective forum for resolving trade mark disputes, misuse of the system can result in substantial cost penalties.
If you would like advice on managing UKIPO trade mark tribunal costs, managing risk in opposition or invalidity proceedings, or assessing whether a dispute is worth pursuing, our trade mark experts would be happy to assist.
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Please note the contents of this blog is given for information only and must not be relied upon. Legal advice should always be sought in relation to your specific circumstances.
