- within Intellectual Property topic(s)
In inter partes proceedings, when a party is found to be the losing party, it must bear the costs advanced by the winning party in the proceedings in question.
The procedures vary depending on the office involved. Before the European Union IP Office (EUIPO), for example, decisions are issued regarding costs in opposition, invalidity and revocation proceedings, as well as all related procedures. In comparison, the French IP office, the Institut national de la propriété industrielle (INPI), rules on costs, following a request from the parties, in revocation and invalidity actions (as per Article L. 716-1-1 of the French IP Code), but not in opposition proceedings.
When a decision is issued regarding costs, the winning party has the right to claim reimbursement of costs from the losing party, as provided by the decision. To do so, the winning party generally contacts the opposing party, either directly or through its representative, to demand payment. The losing party can then agree to pay or refuse to comply.
If the losing party refuses, the winning party can either leave it at that (this is the case in most instances) or decide to enforce the decision. However, one must bear in mind that obtaining enforcement of a decision can itself involve costs, which are sometimes higher than the amount awarded by the decision.
Conditions for enforcing a cost decision
Simply obtaining a favourable decision is not sufficient to make a claim. On the contrary, several conditions must be met:
- The decision must include a ruling setting the amount of costs.
- The decision must be final. This must be certified by a document attesting that no appeal has been filed, such as a certificate of no appeal.
- The decision must be enforceable.
How to enforce a cost decision
The procedure for enforcing a decision varies depending on the office that issued it.
- If the decision is issued by the INPI, then the enforcement order must be requested from the INPI once the certificate of no appeal has been obtained.
- For decisions issued by the EUIPO, enforcement proceedings are not within the Office's jurisdiction but must be initiated through the competent national authorities of the territory in which the decision is to be enforced, generally the state where the losing party is domiciled.
Once these three conditions are met, enforcement of the decision proceeds in accordance with the procedural rules of the state in which it is to be enforced.
For example, to enforce a cost decision in France, it must be served on the losing party by a bailiff, pursuant to Articles 653 and seq. of the French Code of Civil Procedure.
Pursuant to these articles, service of process is effected directly on the losing party if the latter is a natural person. If the party is a legal entity, service is effected on its legal representative, an authorised agent or any other duly authorised person.
The bailiff informs the duly authorised person of the content of the served document, the amount due, and the deadline for compliance.
If compliance is not achieved within the prescribed deadline, the bailiff may then proceed, using the original judgment, to attach the amount specified in the judgment directly from the losing party's accounts.
The amount due will be increased by late payment penalties, including the bailiff's fees, which will therefore also be payable by the losing party.
Deciding whether to enforce cost decisions
Although enforcement proceedings are complex and can be time-consuming, they do allow the winning party to obtain reimbursement of costs as stipulated in the judgment(s). Furthermore, in the event of a dispute with an opposing party, enforcement proceedings can also constitute a significant means of exerting pressure, particularly if the sums to be reimbursed are substantial.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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