Settlement costs now included in Draft Manual of Practice and Procedure


The Australian Trademarks Office (TO) has issued a new Part 55 of the Draft Manual of Practice and Procedure to deal with costs where a proceeding is resolved before it goes to a full hearing. Part 55 has been updated to reflect the decision of the Federal Court in Aussie Red Equipment Pty Ltd v Antsent Pty Ltd. In that case, the court's costs award, following settlement between the two parties, took into account the respondent's failure to comply with directions and delays in reaching settlement.

The new draft manual now provides that where an opposition is resolved prior to a full hearing, the TO may decline to make an award of costs unless the party seeking them provides it with either:

  • a copy of the settlement terms dealing with the question of costs;

  • written confirmation by both parties indicating that one of the parties should be awarded costs but that they have been unable to agree on an amount; or

  • written submissions setting out "exceptional circumstances that would justify an award of costs, including but not limited to the conduct, non-appearance or disappearance of the other party" (Paragraph 2.5 of Part 55).

According to the draft manual, circumstances where an opposition proceeding may be resolved before the start of a full hearing include:

  • withdrawal of a trademark application;

  • withdrawal of an opposition; or

  • determination of an opposition prior to a hearing.

A party to proceedings before the registrar may apply for an award of costs during the proceedings or within three months of the date of the registrar's decision. The TO will consider an application for costs once both sides have had an opportunity to make submissions.

Stephen Stern and Melissa Harrup, Corrs Chambers Westgarth, Melbourne

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