Costs Where the Agent of Record is Slow but Sure

tortoise

On 17 February 2016, Talia Bio-Cosmetics LTD filed Israel Trademark Application No. 282845 for the word Talia covering soaps, ethereal oils and cosmetics in class 3. We assume that the term ethereal oils means essential oils, i.e. oils having a low vapour pressure that are easily vapourized.

The mark was allowed, and then, on 29 May 2016, ARIANDA THALIA SODI MIRANDA, represented by Colb, filed an Opposition.

Talia Bio-Cosmetics LTD engaged Adv. Moshe Goldberg to represent them, and, on 10 July 2016, the Opposition was withdrawn. Then Adv. Goldberg submitted a request for 10,200 NIS costs for 17 hours work spent on the Opposition. The cost request was supported by a detailed list of work done.

The Applicant claimed that the costs requested were exorbitant and unrealistic since the Opposition was withdrawn so early. The Applicant further noted that the request was not accompanied by an Affidavit and alleged that it was insufficiently detailed.

The Deputy Commissioner Ms Jacqueline Bracha noted that Section 69 of the Trademark Ordinance 1972 stated that costs were at the discretion of the Patent Office :

In any hearing before the Commissioner, he is authorized to award the party costs that he considers realistic.

In this instance, the Opposer, by withdrawing the Oppostion, is considered as having lost the proceeding and is obliged to pay costs. See Supreme Court Ruling 891/05 Tnuva Cooperative for Marketing Israeli Produce vs. The Authority for Granting export Licences of the Department of Trade and Industry p.d 60(1) 600 (30 June 2005).

As a matter of principle and as a starting position, the prevailing party is entitled to real costs, i.e. the costs that he has had to lay out. However, this is only the starting position. It is not the end of the matter, since the one sitting in judgement should examiner the costs requested and decide if they are reasonable, proportional and essential,when considering the whole picture. The Attorney’s fees are a relevant but not the only relevant consideration.

The Applicant has requested a rather large costs of 10,700 Shekels for 17 hours work spent on the file. In practice, the Opposer filed an Opposition and then requested an extension for submitting the Statement of Case. The Applicant requested that a bond be paid and also responded to the request for an extension. The Applicant never filed any substantive response since the Opposition proceeding was closed a mere week after it was opened.

To the extent that costs are extreme, there is a greater burden of proof on the Applicant to justify them. See Opposition to Patent Application No. 153109 Unipharm vs. Mercke Sharpe & Dohme 29 March 2011.

Ms Bracha considered the statement of costs sufficiently detailed but nevertheless considered it unreasonable when considering the stage of the proceeding reached, where no statement of case and no evidence had been filed. Consequently she ruled costs of 2000 Shekels to be paid within 21 days.

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