Lyndon Bradley Simmons v Latrobe Brewing Company

[1996] ATMO 11

TRADE MARKS ACT 1955

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

Re:Opposition by Latrobe Brewing Company to the registration of trade mark applications 543943, 543944 and 543945 in the name of Lyndon Bradley Simmons.  Review of the taxing of costs.

Background
A delegate of the Registrar of Trade Marks has dismissed the above oppositions and directed that the applications proceed to registration, awarding to the applicant “costs in accordance with the Official Scale”.

As to those costs, the applicant has submitted a bill to be taxed by the Trade Marks Office, having not been able, presumably, to agree with the opponent as to the sum involved.  The parties have both commented on the bill of costs.  The point of dispute is, strictly speaking, the applicant’s costs in receiving and perusing more than one set of evidence. 

The successful applicant has had its costs taxed by a taxing officer in the Trade Marks Office but does not agree with the outcome.  It has asked for a review of the taxing.  Such a review is provided for in regulation 71A(4) under the 1955 act and I am to do this, as a delegate of the registrar.

In the matters in question, the opponent filed three separate Notices of Opposition, one against each proposed registration, as required by s49.  These were supported by evidence in support.  There were three sets of evidence but they are “exactly the same”, as the opponent’s attorney puts it.  Beyond that point, matters were dealt with as one:  one set of evidence in answer, one hearing, one decision.

The taxing officer has followed a line of decisions in the Trade Mark and Patent Offices which have established a practice for “multiple” oppositions, as such cases are known.  This practice is to say that the cost of perusing the three sets of evidence is to be taxed as one, and costs allowed as though only one set had been served.  Further, the taxing officer has said that costs will be allowed for the perusal of only one notice of opposition.  In this, the taxing officer has gone beyond even the opponent’s position - the opponent has disputed the costs for multiple evidence but has raised no dispute with the claim of costs for receiving multiple notices of opposition.

The applicant argues that the taxing is wrong.  It says that each notice of opposition required separate docketing, which I take to be some sort of accounting or administrative operation within the applicant’s attorney firm.  Each notice is also said to have needed separate consideration in view of the different goods involved.  Similarly, the evidence is said to have had different ramifications from one application to the next, and each set needed its own docketing.

Even before this, costs were the subject of some argument at the hearing.  There, the applicant had argued that it was entitled to a full award of some of its costs, ie that the award should not be limited to just the figures fixed by the scale.  The deciding officer, Hearing Officer Homann, conceded that after the registration on which the opponent was relying was taken off the register for non-use there was “little or no chance” of success for the opponent.  None the less, he did not award actual costs after that time. 

The applicant argues that it is particularly hard done by in such an instance, in that not only has it been deprived of its actual costs, which it sought at the hearing, but it has had some of them discounted because of a line of practice said, by the applicant, to be wrong.

I have looked at the records of relevant decisions on such matters in the trade marks office.

Part of the practice is based on item 14.7.5 in the Patents Hearings Manual.  That text simply notes that costs are split where identical evidence is used by more than one opponent.  Otherwise, if several opponents rely on similar but clearly independent evidence, the manual says that each opponent is entitled to an award of its costs according to the success of its cause.  But the Patents Hearings Manual deals with the allocation of costs between multiple opponents, not with multiple oppositions by one opponent.  I do not think, moreover, that the multiple oppositions to closely related trade marks, which are so common in trade mark matters are analogous to anything in patents practice.

It has also been said, in defence of our present practice, that it has not been the subject of complaint in the time between 1980 and 1991.  That argument carries some weight, but the converse is that, in the last few years, there have been a number of complaints, culminating in the present matter.

One thing is clear.  Even in these days of word-processing, documents such as notices of opposition have to be framed and prepared, and clients billed for these operations.  When such documents are received by the other side in an opposition, they must again be considered.  I think it is simplistic to say that, merely because two generalised notices of opposition are substantially identical, they can be produced and administered, by a professional to professional standards, as if they were one.  If nothing else, the generalised grounds have to be framed in a way that is judged, by the professional in question, to suit both or all of the applications being opposed. 

Likewise, each opposition requires time-clocks to be set up and monitored.  This is so that the steps set out in the regulations are followed by each side and that its adversary knows they have been complied with.  In the lack of any external evidence, I can only compare these costs to the work done, in the Trade Marks Office, to monitoring the time-clocks and procedures.  Such administrative costs are not specifically mentioned in the scale, but I presume that the step-by-step elements in the scale carry, as part of each item, some notion that each step is underpinned by such processes.

It is simplistic in the extreme to say that identical notices can be prepared and served by the simple pushing of buttons with no additional costs to anyone.  Carried to its logical end, no firm of patent attorneys, or of solicitors with experience in such matters, should ever be awarded more than token costs in preparing even one notice of opposition, since the costs of preparing a range of more or less routine notices have long ago been amortised. 

In the present case, a trade mark applicant has had to receive, record and consider multiple notices.  No professional would, in such a case, assume for one minute that these notices were identical without checking that assumption.  And beyond that point, each notice has to be fitted to the facts of its particular case, the client informed and the relevant diary dates entered.

With the coming of the Trade Marks Act 1995, the shift in onus will change some of this.  An opponent will have to specify grounds from a set which, it is true, is now limited.  But, overall, the position on multiple oppositions will not change.  An opponent will now bear the greater onus of showing why registration should not go ahead.  An applicant who has been opposed will, as now, find itself required to consider an opponent’s grounds against the varying facts of more than one application.  Both sides will have to deal with the extension of this to multiple classes.

All in all, I think it is fair to say that receiving (or preparing) a second notice of  opposition is just as expensive as receiving or preparing a first.  Each one should be taxed in its own right.

As to evidence, it is extreme to say that the evidence to actually support or answer an opposition to a second or third registration can be served or received for no additional cost to either party.  If a professional receives three sets of evidence, one for each of three opposition matters, it is presumably his/her professional duty to check that the evidence is in fact identical since, presumably, s/he would be liable for failing to find out if it was not.  Even if the evidence is identical, the ramifications must be considered against the specific marks and goods at issue.

Likewise, the evidence must have been prepared before it can be served.  While costs in the actual preparation of evidence are not at issue in this decision, I will flag that question as one for the future.  In preparing evidence, the issues to be addressed must be kept in mind for each case, the evidence framed as appropriate and the whole thing signed and served.  Much will depend, of course, on the difference between the trade marks and goods at issue but to say that evidence can always be prepared for three cases as cheaply as it can for one, as our present practice does, is very, very doubtful.

It is unlikely, on the other hand, that the evidence for the second and third cases is always as expensive as the first.  In the simplest cases, the goods at issue may be identical and it may be only minor cosmetic differences between the trade marks at issue that gives rise to multiple applications and hence to multiple oppositions.  In such cases, there may have been considerable savings in the to-and-fro of letters, telephone calls and draft declarations to potential declarants.  The evidence must, of course, be set according to professional standards, but none the less there may have been some savings of professional time and effort along the way.  This is so irrespective of how the evidence, once it has been obtained, is arranged for service, be it as one broad-ranging declaration or as several specific ones.

For the moment, however, I am not called on to decide such questions.  The matter with which I am concerned is the receipt and perusal of evidence.  For this, it seems to me that the time has come to apportion costs.  This practice is new, and it is a change in practice which will no doubt be the subject of discussion with the Institute of Patent Attorneys, the Law Society and others.  It will also perhaps be the subject of submissions at future hearings.  None the less, the question is one for my decision now, and that decision should not fairly be allowed to wait for these consultations, which will probably be more fruitful if there is a definite statement of practice.

In the lack of any detailed figures from the aggrieved applicant or from the opponent, it is hard to set a figure.  None the less, since our present practice is, on the face of it, unfair to a successful party, a small step towards the applicant’s position will be unlikely to put matters further wrong, even if it does not fully redress the balance.

Decision
I direct that costs in the receipt of evidence in the additional oppositions be set, after the first case, at 20% of the relevant scale item for the first. 

I also direct that the receiving of a notice of opposition be taxed as a cost in its own right, for each opposition, at the figure given in the scale of costs. 

However, I agree with the practice of not taxing separate costs if they are not sought in the bill.  This will recognise the fact that a party is best able to assess its own actual costs; if they are not significant enough to claim, or have been made the subject of some other arrangement, then they should not be dealt with by this office.  In the present case, the applicant made no claim for additional costs in its evidence in answer to the additional oppositions.  I therefore agree with the taxing officer’s assessment on that question.

T. E. Williams
Hearing Officer
16 February 1996