This matter concerned an award of costs that was sought by Beling, after DC Comics pursued oppositions to Beling’s various trade mark applications and withdrew the oppositions prior to decisions being issued, but after all evidence and arguments had been prepared and submitted by both parites.
Upon receiving notice that DC Comics had withdrawn its oppositions, Beling applied for an award of costs. This application was denied by the Trade Marks Office and Belling requested to be heard on the matter.
A portion of the initial reason for the Trade Marks Office refusal to award costs arose from Beling being self-represented and the wording of Schedule 8 of the Trade Marks Act referring to ‘paying a third party for work done on its behalf’.
The Hearing Officer noted the following as Beling’s main arguments:
- The opponent’s withdrawal of the oppositions without the applicant’s consent was withdrawal with prejudice.
- The opponent effectively surrendered to the applicant and is therefore liable for the applicant’s costs.
- Pursuant to Beling [a separate Federal Court matter involving Beling, in which the Court confirmed that a self-represented solicitor is entitled to costs] the applicant, being a self-represented solicitor, is entitled to costs for work that he has done on his own behalf.
- The opponent’s conduct in commencing and prosecuting the oppositions was unreasonable and without reasonable prospect of success and warrants an award of costs above the official scale.
In relation to 1, the Hearing Officer noted that there are no provisions, or powers granted, within the Trade Marks Act for the withdrawal of an opposition to be considered as being done ‘with prejudice’. As such, Beling’s claim was taken as being ‘without any legal basis’.
On 2, the Hearing Officer again noted the differences between civil enforcement proceedings before a court and an act before the Trade Marks Office, ultimately finding that this claim was without merit.
The Hearing Officer agreed that 3 was the correct application, however, the Hearing Officer found that the oppositions were not ‘matters where it was apparent from the beginning that [Beling] ‘was almost certain to have succeeded’’.
Beling’s request for costs was refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Litigation Team, Trade Marks Team
Trade Marks Team