How much is this all going to cost?
It depends on how far the opposition goes, and how much evidence is filed. Most trade mark oppositions are resolved prior to a hearing. This is the best way to keep costs down.
If a matter can be resolved by agreement, before both sides spend too much time on preparing evidence, costs can usually be kept under $10,000 (sometimes well under).
If the matter proceeds all the way to a hearing and decision, total costs would usually be between $15,000-$40,000. This depends heavily on the amount of evidence filed, and whether barristers are engaged to appear at the hearing.
If the matter is appealed, litigation costs apply. Litigation in the Federal Court is very expensive, and costs can easily exceed $100,000. This is one of the reasons appeals are rare and settlement of disputes is common.
Can the winner recover their costs from the loser?
The Registrar will usually award costs against an unsuccessful party in the opposition.
These costs are not the actual costs incurred by that party, but are limited by a scale in the Trade Mark Regulations.
In most cases, costs recoverable during the opposition are less than $5,000.
If an appeal is filed, costs can also be awarded by the courts. These can be more significant, but are invariably do not compensate a party for all their out of pocket expenses.
Is it worth spending the money on an opposition?
Generally, there must be a compelling commercial reason for opposing a trade mark, or defending an opposition.
A registered trade mark is a powerful intellectual property right. Its biggest advantages are strong enforceable rights against potential infringers, and providing the owner a statutory defence to allegations of infringement of other registered trade marks.
In some cases, if a business cannot obtain registration of a trade mark, this will leave them open to significant risks. If they are committed to the trade mark and do not wish to rebrand, then there may be strong commercial justification for fighting an opposition.
Conversely, if the outcome of an opposition does not have significant commercial ramifications, a party may not believe the cost is justified.
These issues should be discussed prior to the opposition with an experienced practitioner. If there is no clear goal in engaging in the opposition process (either in attack or defence), then this is a sign that spending money is not commercially justified.
Can an opposition be settled?
Absolutely. Settlement of an opposition is often the quickest and most cost-effective means of resolving a dispute. Provided that both parties are willing to be reasonable, there are very few trade mark oppositions that cannot be resolved by agreement.
Once the opposition process commences (specifically, after filing of the Statement of Grounds and Particulars), the parties can agree to a cooling off period for six months. This essentially stops proceedings to allow the parties to negotiate.
If negotiations are still ongoing near the end of six months, the cooling off period can be extended by a further six months. A maximum cooling off period of twelve months is permitted.
If the parties reach an agreement, this is generally recorded in a settlement or co-existence deed that is signed by the parties.
It is far better to reach any agreement while the matter is before IP Australia. If a decision is handed down and appealed to the court, it can be more complicated and expensive for the parties to extricate themselves from the process.