This recent UKIPO case is a useful reminder that UK opposition proceedings should not be entered into lightly, or conducted in bad faith; otherwise a costs award may be ordered off the usual scale.

The general practice on UKIPO cost awards is that they should be ‘reasonable’. This can be a frustrating point, as the prescribed restrictive scale generally limits claimants to minimal remuneration. This means that those who are on the wrong side of the line are fairly comfortable with the risk of the ultimate costs award. However, few appreciate that the UKIPO does have the power to award costs on a different basis where the circumstances justify it, for example where one party is deemed to have acted unreasonably.

In this case, the defendant applied to register a trade mark at the UKIPO, which consisted of a photograph of the exterior signage of the claimant’s restaurant (featuring the restaurant name ‘HUQQA’). The mark was accepted and registered by the UKIPO.  Shortly afterwards, the claimant (who was the genuine owner of the HUQQA restaurant) realised, and applied to invalidate the registration whilst at the same time seeking registration themselves of HUQQA [as a word mark] at the UKIPO. The defendant went as far as to oppose the claimant’s own HUQQA trade mark application, claiming that the photograph had been created for him by a designer; a statement which was held to be false.

The claimant’s invalidation action was successful on all grounds, namely bad faith (under section 3(6) of the Act) and copyright infringement (under section 5(4)(b) of the Act) hence the defendant’s mark was deemed to have never been registered.  It followed that the defendant therefore did not have an earlier trade mark to rely upon in its own opposition hence it was dismissed. Most notably, the hearing officer found that the defendant had made false statements and had maintained a stance that had caused considerable additional work for the claimant.  As such, the UKIPO awarded “costs off the usual scale”.

The UKIPO therefore left the copy-cat applicant not only with an invalid UK trade mark, but also a painful costs award of £18, 574 which was ordered to be paid within 14 days.