Trade Mark News & Information

Trademark Lawyers Australia – Federal Court – Beling

Beling v Sixty International S.A. [2015] FCA 250 (20 March 2015)

This was a rather unusual case in that it involved an appeal solely on the issue of the failure to award costs by the Registrar of Trade Marks.

Mr Beling successfully defended his trade mark application against an opposition by Sixty international SA of Luxembourg. He acted for himself, but also happened to be a solicitor.

Each party filed some evidence in the opposition proceeding before the Registrar and the Delegate ultimately issued a decision on the papers because neither party requested a hearing or filed written submissions. As a result, Mr Beling was not given the opportunity to file detailed submissions on the costs issue before the decision issued. Even though Mr Beling was successful, the Delegate declined to award costs in his favour because he was representing himself.

Mortimer J was obliged to follow authoritative judgments which have held that, where courts have power to award costs, this power may be exercised in favour of a self-represented party where that party is a lawyer. Her Honour commented that this solicitor litigant exception was anomalous and unjustified, but that was her personal view. In her Honour’s opinion, if a lawyer wishes to represent himself, he should be treated like any other self-represented party.

The Registrar’s powers and functions in opposition proceedings must be exercised and performed judicially. The power to award costs must necessarily be guided by the same principles applicable to similar discretionary powers to award costs in Federal Court proceedings and those principles include the exception for solicitor litigants.

Her Honour commented that the Delegate was seemingly unaware of this exception and had not given Mr Beling the opportunity to make submissions on the relevant judicial authority.

As a result, Mortimer J directed the matter be returned to the Registrar to decide on the award of costs.