Beling v Sixty International S.A.

The matter of Beling v Sixty International S.A. involved an appeal against a decision made by a delegate of the Registrar of Trademarks regarding costs associated with a trade mark registration application. The applicant, Mr Beling, represented himself in the proceedings and sought costs above the scale provided under the Trade Marks Regulations 1995. The respondent opposed the application for registration but provided little material to substantiate its opposition, and the delegate of the Registrar ultimately determined that the respondent had not established any ground of opposition under the Trade Marks Act 1995 (Cth).

The legal issues in the case centered around the applicability of the solicitor litigant exception to awards of costs under the Trade Marks Act. This exception, which precludes self-represented litigants from claiming costs incurred, is well-established in Australian law. However, the court had to determine whether this exception should apply to awards of costs under s 221 of the Act, which grants the Registrar the power to award costs against a party to proceedings brought before her. The court also considered whether the respondent's delay in filing evidence and the lack of meaningful material in opposition justified an award of costs above scale.

The court found that the delegate of the Registrar had failed to apply the correct legal principles in declining to order costs to Mr Beling. The court held that the solicitor litigant exception should not apply to awards of costs under the Trade Marks Act, and that the Registrar has the discretion to award costs to a self-represented litigant who is a lawyer. The court further found that the respondent's delay in filing evidence and the lack of meaningful material in opposition justified an award of costs above scale. The appeal was allowed, and the decision of the delegate of the Registrar as to the applicant's application for costs was set aside. The Registrar was directed to reconsider the applicant's application for costs in accordance with the reasons of the Court on this appeal. The respondent was ordered to pay the applicant's professional costs of and incidental to the appeal on and from 12 January 2015 and disbursements incurred in the appeal, such costs and disbursements to be fixed by the Court in accordance with directions given.