Proposed scale of costs in opposition proceedings published

The Trademarks Registry of Hong Kong has published a proposed scale of legal costs to be awarded to the successful party in opposition proceedings. 

 

In Hong Kong, contentious proceedings before the registrar of trademarks have the same cost consequences as contentious proceedings before the court. Therefore, the losing party will normally be ordered to bear the winning party’s legal costs (official and attorney fees), to be fixed by the registrar if not agreed between the parties.

 

The timeframe within which an opposition may be filed is quite short (three months less one day from the date of publication of the trademark application in the Intellectual Property Journal, extendable for a maximum of two months). A party is often alerted to a potentially objectionable application only shortly before the expiry of the deadline for opposition. As a result, a party may be forced to file an opposition to prevent the application from progressing to registration before it can carry out a full review of the merits of the opposition, thereby exposing itself to the risk of being ordered to bear the applicant’s costs. The applicant is also subject to similar time pressure to defend its application. Although a two-month extension is possible (subject to the registrar’s discretion), an application for extension of time may encounter frivolous objections from the other party.

 

Concerns with regard to cost awards have thus been raised by professional bodies in Hong Kong. Following extensive discussions, the registrar published the following proposed scale of costs.

 

Opposition proceedings initiated on or after the commencement date of the scale	Scale party and party costs allowed
Preparation and filing of a notice of opposition or counter-statement	Up to HK$8,000, plus official fees and translation costs (where it is necessary to translate details of foreign trademarks)
Perusal of a notice of opposition or counter-statement	Up to HK$6,000
Extension of time for hearings taking place on or after the commencement date	Scale party and party costs allowed
Preparation for and attendance of hearings	Up to HK$8,000

 

The proposed scale of costs will be applicable only where the parties are legally represented, and only in relation to the specified items. The scale will be subject to review in the future to take account of the actual costs involved in contentious proceedings before the registrar.

 

The proposed scale of costs will not fetter the registrar’s discretion to award such costs as he or she may consider reasonable, since particular circumstances may justify a deviation from the scale. However, the scale will give guidance to parties to opposition proceedings as to the assessment of their costs.

 

The proposed scale of costs was published for consultation for one month, ending on June 30 2008. According to feedback from the Trademarks Registry, it is expected that the proposed scale will be adopted. A commencement date of August 2008 is likely to be announced shortly.