Kiwi Munchies Pty Ltd v Inghams Chickens Pty Ltd

[2005] ATMO 1

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Review of costs in the matter of opposition by Kiwi Munchies Pty Ltd to registration of trade mark application 856195(29) - CHICKEN MUMCHIES - filed in the name of Inghams Chickens Pty Ltd.

Delegate:	Mary Skivington
Decision:	Review of costs – Award of costs found to be correct.

Background

1. Inghams’ Chickens Pty Ltd, (‘Inghams’), applied to register the trade mark CHICKEN MUNCHIES for goods in class 29 on 6 November 2000.  The application was accepted but its registration was opposed by Kiwi Munchies Pty Ltd, (‘Kiwi’). 

2. In due course the matter was heard and as Kiwi established one of its grounds of opposition registration of the trade mark was refused and costs were awarded against Inghams. Within the time allowed Kiwi lodged its Bill of Costs.

3. The Registrar is limited in the amount allowed for costs and in the items which may be awarded by virtue of section 221 of the Trade Marks Act 1995, (‘the Act’), and regulation 21.13 of the Trade Marks Regulations 1995.

4. Section 221 provides that the Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

5. Regulation 21.13 provides that for the purposes of section 221 of the Act (which deals with costs), costs may only be awarded in respect of a matter set out in Schedule 8.

   Kiwi, as the successful opponent, claimed costs as set out in the table below along with the amounts it was subsequently advised would be allowed for items which are listed in schedule 8.

No.	Description	Amount Claimed	Amount Allowed
1	Notice of Opposition	$180	$180
2	Evidence in support	$480	$480
3	Receiving  and perusing evidence in answer	$145	$145
4	Evidence in reply	$240	$240
5	Submissions for hearing on the record	$360	$0
6	Receiving and perusing further evidence in answer	$145	$0
7	Preparing further evidence in support in response to further evidence	$240	$0
8	Preparing for hearing of substantive matter	$360	$360
9	Attendance at hearing	$225	$225
10	Filing fee	$250	$250
11	Freedom of information,(FOI)	$30	$0
12	Further fee for FOI	$24.50	$0
13	Hearing fee – substantive matter	$500	$500
Total	$3179.50	$2380

1. Items numbered 1-4, 8-10 and 13 were allowed in the amount claimed. As these costs are in accordance with Schedule 8 of the regulations they were rightly allowed.

2. Items 5-7 and 11-12 were not allowed. Items 11 and 12 relate to costs for obtaining documents under the Freedom of Information Act. There is no provision in Schedule 8 for the payment of such costs and therefore it follows that no payment may be made for any costs incurred in this way. At the time Kiwi requested a review of the taxation of costs, under the provisions of regulation 21.13 (4), on 1 November 2004,  it was no longer pressing this claim. It advised that only three items remain in dispute, these being items numbered 5, 6 and 7.

3. Both parties were given the opportunity to be heard on the matter or to make written submissions. Inghams advised that it did not wish to be heard and would rely on submissions previously made in respect of the costs claimed.  Ms Sophia Paras, a solicitor acting on behalf of Kiwi did not apply to be heard but did file written submissions.

4. The remaining items in dispute are set out in the table below.

Item	Amount Claimed	Amount Allowed
1	Submissions on the record	$360.00	$0.00
2	Receiving and perusing further evidence in answer.	$145.00	$0.00
3	Preparing further evidence in support	$240.00	$0.00

1. There is no listing in Schedule 8 for costs associated with the preparation of written submissions where a decision is to be made on the basis of the written record. The opponent filed written submissions in respect of the substantive matter on 5 May 2003, at which time the matter was to have been decided on the written record. However, before the matter was determined Inghams applied under regulation 5.15 for permission to serve further evidence. Kiwi objected and in due course the matter was set down for hearing. In the particular circumstances of the case the Registrar’s delegate determined that Inghams’ request for permission to serve further evidence was allowable.

2. Subsequently and in accordance with Inghams’ request of 30 June 2003 the substantive matter was set down for hearing on 30 March 2004. Schedule 8 allows $360 for costs for preparation for a hearing. Ms Paras claims that the costs associated with the preparation of submissions in May 2003 were ‘thrown away by Inghams’ late application to file additional evidence and that Kiwi should be compensated for those costs thrown away.’ I do not agree with Ms Paras. The submissions prepared in May 2003 address grounds of opposition under sections 41, 42(b), 43, 44, 58 and 60 of the Act, as do the submissions made at the hearing in March 2004. The earlier submissions clearly formed the basis for the later submissions and were in effect part of the preparation for the hearing of the substantive matter, so that the costs associated with their preparation cannot be said to have been ’thrown away’.  A separate claim of costs for their preparation is a claim to be awarded costs twice for the preparation of submissions in respect of the same substantive matter. There is no legislative basis for allowing this claim.

3. The opponent has claimed costs for receiving and perusing further evidence in answer and preparing further evidence in support. The terminology in respect of evidence in opposition proceedings is exact. The Act does not recognise these items.

4. The opponent serves Evidence in Support of its opposition and the applicant then serves Evidence in Answer to the evidence in support. The opponent may then serve Evidence in Reply to the evidence in answer. Schedule 8 allows for an award for costs for each of these items.

5. Either party to the proceedings may apply for permission to serve a copy of Further Evidence on the other and, in certain circumstances, this will be allowed. Unlike the evidence served at the earlier stages of the opposition process, however, its allowance is by no means guaranteed.  Ideally, there should in fact, be no need for further evidence and for this reason Schedule 8 does not allow for an award of costs for further evidence. 

Decision

1. I find that appropriate costs were awarded in respect of items listed in Schedule 8 and that there is no legislative basis for allowing an award of costs in respect of the preparation of: 

   • Submissions on the record
   • Receiving and perusing further evidence in answer and
   • Preparing further evidence in support

   I direct that costs be taxed and certified accordingly.

   Mary Skivington
   Hearing Officer
   Trade Marks Hearings
   17 January 2005