The UK Intellectual Property Office published a designs costs appeal decision on 2 November (BL O/0958/26, dated 25 October). Its main point is procedural: submissions made in one case do not automatically apply to another case file just because they concern it. To have the same point considered in several cases, a party must seek consolidation or file the submissions in each case.
Background
A company applied to invalidate twelve registered designs; the proprietor did not defend any of them and all were cancelled.
The applicant claimed £162 per case, the £48 filing fee plus six hours at £19 an hour, and the registrar made costs orders in that amount. The proprietor appealed the orders for five of the designs, and the appeal was heard by the Appointed Person.
Both limbs of the appeal fail
- Submissions not considered: the proprietor's 30 March letter on costs mentioned "all twelve proceedings", but its header listed seven other designs. The Appointed Person held it was proper to ignore it; otherwise hearing officers would have to read every file involving the parties, which would be unmanageable.
- Duplicated work: the five cases used largely the same documents, and the Appointed Person had some sympathy with the argument that later cases should take less time. Thirty hours across five cases was on the high side but within the bounds of reasonableness, so the orders stood.
A missing attachment
On appeal, the successful party sent an email before the deadline without its updated costs schedule, filed the schedule late and did not apply for permission. The Appointed Person declined to consider it and awarded £96 for four hours at £24 an hour, based on an earlier filing. The proprietor must pay £906 in total by 4pm on 16 November. This is a case-specific procedural ruling, not a new costs scale.
J&C recommends that anyone running several UK design invalidation or opposition cases at once either applies for consolidation or files the same submissions under every case number, and checks the filing record case by case. When filing by email with attachments, confirm that the attachments actually arrived, and pair any late filing with an application for permission.
Source: www.gov.uk | assets.publishing.service.gov.uk
