A word of warning: the UKIPO and IPEC can remove the cost cap where they feel the circumstances warrant it, particularly if a party acts very unreasonably.
Parties in proceedings in the UK IP Office (UKIPO) and the Intellectual Property Enterprise Court (IPEC) can usually enjoy the protection of scaled costs in proceedings. This means that, for each stage of the proceedings, there is a maximum level of costs that the court or the UKIPO will award, regardless of the actual costs incurred and, as a result, the UKIPO and IPEC are popular forums for handling trade mark disputes.
However, both the UKIPO and IPEC can remove the cost cap where they feel the circumstances warrant it, particularly if a party acts very unreasonably. Even then, there is a real reluctance to lift the cap unless the behaviour is particularly egregious.
Two recent cases have shown the sorts of circumstances in which the IP Office and Court have decided to penalise a party for what they considered to be wholly unacceptable conduct.
- In the case of Link Up Mitaka Limited (trading as THEBIGWORD) v Language Empire Limited, the IPEC judge found that the defendant's behaviour amounted to an abuse of process because they had sought to conceal the truth from the court in spite of the specific procedures that the court had put in place to find out the extent of the infringement.
- In the UKIPO decision in the opposition filed against the application to register TRUMP TV (case no. O-409-18), the IP Office held that the company that had tried to register the trade mark had shown "a disdainful disregard for the opposition costs" and had acted opportunistically in a way that appeared "calculated to maximise potential interference" with the opponent's brand.
It is almost always the case that, when one party acts unreasonably, the party on the other side incurs costs as a result of that conduct and, while the cost cap helps parties to manage their cost risk, the IPEC and UKIPO can take steps to ensure that the cost cap does not effectively penalise the party on the receiving end of unreasonable conduct.
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