TRADE MARKS
WHETHER REGISTRAR HAS POWER TO AWARD COSTS AFTER TERMINATION OF PROCEEDING BEFORE HIM: TERMINATION OF OPPOSITION TO REGISTRATION
TRADE MARKS ACT 1905, ss. 38, 41, 47, 96
The Registrar of Trade Marks has forwarded for advice the following memorandum:
Section 96 of the Trade Marks Act 1905-1919 empowers the Registrar to 'award costs against any party to any proceeding before him'. The words 'before him' seem to direct that at the time an award in respect of costs is made the proceedings must be actually before the Registrar.
Take an opposition to the registration of a trade mark under Division 3 of the Trade Marks Act. The notice of opposition was lodged in accordance with section 38. The counter-statement was lodged in accordance with section 41. The opponent then, instead of filing evidence in accordance with regulation 54 (a) of the Trade Marks Regulations, lodged a notice of abandonment of the opposition. The applicant was notified of the receipt of the notice of abandonment of the opposition. The fee payable in respect of the registration of the trade mark was paid and a certificate of registration issued under section 47. Subsequent to the date of issue of the certificate of registration the applicant, by his solicitors, made an application for an award as to costs.
In regard to the preceding paragraphs the following questions are submitted for your opinion:
- Can an award as to costs be made on an application for an award as to costs lodged after the termination of a proceeding?
- Was the proceeding stated in the next preceding paragraph terminated by (a) the payment of the registration fee; or (b) the issue of the certificate of registration?
There appears to be nothing the Trade Marks Act 1905-1919 or the Regulations made thereunder which requires the Registrar of Trade Marks to award costs against any party to a proceeding before him before the proceeding is terminated.
In my opinion, therefore, the answer to question (1) should be in the affirmative.
As regards question (2) the opposition to the registration of the trade mark constituted, I think, one proceeding, and that proceeding, in my opinion, terminated when the opponent abandoned the opposition.
[Vol. 16, p. 341]