Before Principal Assistant Registrar P Arul Selvamalar
5 February 2003
Interlocutory hearing - amendments to Counter Statement pursuant to amendments to Notice of Opposition by Opponent - quantum of costs that Applicants entitled to - whether Registrar may depart from Scale of Costs in Fourth Schedule
Women's Secrets SA, the Applicants had two trade mark applications which were accepted for registration and advertised under the Trade Marks Act (Cap 332, 1992 Ed). The opponents, Dorsub (DPR) Limited, filed 2 oppositions to the applicants' marks and in their statements of grounds cited provisions of the Trade Marks Act 1998. The applicants' response in their Counter Statements was that the grounds for the opposition were erroneous. The opponents applied for leave to amend their grounds of opposition. The applicants did not object to the amendments but they applied for leave to make consequential amendments to their counter statements. They also applied for the cost of the amending each counter statement at $800. The opponents agreed that the applicants were entitled to costs but only agreed to the sum of $150 per counter statement. The applicants submitted that the Registrar may depart from the scale of costs as the costs of making amendments to pleadings were not stipulated in the scale of costs in the Fourth Schedule of the Trade Mark Rules. The opponents urged the Registrar that this was not an appropriate case to depart from the scale of costs.
- The Trade Marks rules stipulate that scale of costs shall apply in relation to taxation proceedings. The present case was not a taxation proceeding that is usually held at the end of an opposition hearing. It was an application for cost of making amendments to pleadings, which was heard by the Registrar as both parties agreed to have the issue of costs determined by the Registrar. Although this is not a taxation proceeding, the Registrar may use the Scale of Costs as a guideline.
- The Opponents submitted that the Registrar may depart from the scale of costs, citing the practice of the UK Patent Office as set out in their Tribunal Practice Notice No. 2/2000. However they submitted that the present case was not a case where it was appropriate to depart from the scale based on the case Societe des Produits Nestle SA v Kellogg Company, an appeal from the decision of the Hearing Officer of the UK Patent Office to David Kitchin QC. In that case, it was decided that there were no reasons for the departure from the Scale of Costs although it was decided that the Registrar does have the discretion to do so.
- The Registrar is not bound by the tribunal practise notice of the UK Patent Office, nor the appeal from the Hearing Officer. However the Registrar found that the reasoning in the notice and in the Nestle case relating to the Registrar's discretion to depart from the scale of costs is sound and applies with equal force in the present case. There is merit in the reasoning that costs should generally follow the scale except where the circumstances warrant a departure from the scale. The question then is, do the circumstances of this case warrant a departure?
- The amendments to the applicants' counter statements would not have been necessary if the opponents had been diligent in their preparation of their oppositions. The amendments were necessary because the oppositions were filed on grounds under the new Act instead of the old Act. In such cases, the Registrar may award costs departing from the scale which may be used as a base guideline. The Scale provides that the cost of preparation of a Counter Statement is $120. Additionally the registrar felt that this is an appropriate case to award the cost of preparing the original counter statement and the amended counter statement to the applicants. The departure from the scale and the award of costs for filing of both counter statements are to be borne by the opponents, as the amendments could have clearly been avoided by the opponents, if they had been diligent.
- The applicants are awarded $150 for the preparation of the original counter statement, $150 for the preparation of the amended counter statement, $12 for the perusal of the original notice of opposition and $8 for the perusal of the amended notice of opposition, for each trade mark application. Costs of $320 for each opposition are to be paid by the opponents to the applicants within 2 weeks of 5 February 03. Each party is to bear its own cost of preparation and attendance at this hearing.
- Trade Marks Rules 1998, Fourth Schedule, Scale of Costs
- Trade Mark Application No. 2118712 by Societe des Produits Nestle SA and Opposition
- No 50211 by Kellogg Company and Kellogg Marketing & Sales Co (UK) Ltd, UK Patent Office
- Ms Regina Quek (Tan Jin Hwee Eunice Lim Choo Eng) for the Opponents
- Ms Michelle Ng (Donaldson & Burkinshaw) for the Applicants