What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

Intellectual Property (2nd edition)

France Small Flag France

Costs attached to IP proceedings usually include the lawyers’ fees as well as the cost of the diligence of technical experts or design, patent or trademark attorneys and bailiffs.

Their amount can vary depending on the technicality of the case, the strategy elected and the arguments raised in defence.

Pursuant to French procedure rules, the Court may condemn the unsuccessful party to pay the adverse party’s legal costs.

Switzerland Small Flag Switzerland

The costs of enforcement proceedings depend on many factors including the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court, the forum of the proceedings and the behaviour of the parties. Each cantons set the tariffs for the procedural costs. The amount of Court fees depends mainly on the value in dispute and is adapted based on the above-mentioned factors.

The Court will request the claimant to make an advance payment up to the amount of the expected Court costs. The Court decides on the procedural costs in its final decision. The decision on the procedural costs for interim measures may be deferred until the final decision on the merits.

In general, the losing party bears the Court fees and usually has to pay a financial indemnity covering part of the successful party's attorney's fees.

At the request of the defendant and under certain conditions, the claimant must provide security for party costs, for example if he/she/it has no residence or registered office in Switzerland or if there is an important risk that the fees will not be paid at the end of the proceedings.

Poland Small Flag Poland

See question 18.

Italy Small Flag Italy

See answer to question 18.

Cyprus Small Flag Cyprus

The costs of enforcement proceedings depend on the quantum of damages sought and the intellectual property right in issue.

The general rule is that the losing party pays the costs of the successful party but the Court takes into consideration a number of factors when deciding for the payment of the legal costs and may decide that the successful party shall pay its own costs.

A defendant can seek an order for security of costs so as to ensure that he will be able to recover its costs from the claimant. The claimant has to pay a sum of money into the court, as security for the defendant's costs. The application must be made by the defendant promptly or as soon as all justifying facts for the award of the order are known.

Israel Small Flag Israel

The courts generally award costs to the prevailing party in litigation. However, costs generally are subject to caps set by regulation and rarely amount to more than 50% of the actual legal fees expended.

Before an order based on prima facie evidence is granted, the court will require the petitioner to provide a security to cover damages suffered by the respondent, in the event that the order is revoked.

Chile Small Flag Chile

It is possible to recover the value of the official fees that the Trademark and Patent Office demands in the appeals process, in the event that the appellant is successful in the procedure.

Greece Small Flag Greece

Because of the involvement of a variety of factors, such as the complexity of the case, duration of the proceedings, involvement of technical experts (mainly in patent cases) and translation costs, it is very difficult to make an estimation of the costs of IP enforcement proceedings.

The general rule is that the losing party pays the costs of the successful party in relation to the aspects of the claim that were lost. Costs recovery is available for successful parties. However, said costs are ordered at the court’s discretion and, in most cases, only a relatively small portion of the actual costs incurred in litigation is awarded.

Civil Procedure rules allow litigants to seek security for costs. However, said provisions are rarely invoked and courts are reluctant to accept such a request.

Costs are not recovered in criminal and administrative proceedings. Only official fees can be recovered in administrative proceedings.

United Kingdom Small Flag United Kingdom

The general rule in the UK is that the losing party pays the costs of the successful party in relation to the aspects of the claim that were lost. The court takes into consideration a number of factors including the conduct of the parties during the litigation. In the High Court, the winning party's costs will typically be assessed on the standard basis and will allow, subject to the matter at issue, costs that have been proportionately and reasonably incurred to be recovered. This commonly leads to a winning party recovering 60-75% of its legal costs.

In the IPEC, the normal rules of costs do not apply, and the losing party will be liable for a capped amount in respect of the costs of the successful party. In respect of the trial of liability issues, the costs are capped at £50,000. The costs of a damages enquiry are then capped at £25,000.

Security of costs
To ensure that a Defendant is able to recover its costs from a Claimant, the Civil Procedure Rules allow Defendants to seek an order for security of costs. The Claimant would then be required to provide a bank guarantee or other appropriate security or, failing this, to pay a sum of money into the court, as security for the Defendant's costs, should the Defendant succeed at trial.

The Defendant can make such an application once proceedings have been commenced against it. The application must be made promptly or as soon as all justifying facts for the award of the order are known.

Pakistan Small Flag Pakistan

The costs generally consist of two heads, one being the official fee and the other being professional fee.

Official fees(in PKR) for various aspects are given hereunder:

Description

Patents

Trade Marks

Copyright

Designs

Notice of opposition/objection

1,500

6,000

3,000

750

A counter-statement in answer to a notice of opposition

Nil

1,000

Nil

Nil

Notice of intention to attend hearing

1,500

400

Nil

750

Application for cancellation

Nil

400

Nil

750

As far as professional fee is concerned it depends upon the matter and the forum chosen. There is no standard fee for such procedures and the same is decided by each firm/individual handling the matter.

Ecuador Small Flag Ecuador

Enforcement proceeding have no cost beside those charged by the lawyers. The judged might order the offender to pay for the costs incurred by the winning party, although it does not occur frequently.

United States Small Flag United States

Costs for enforcing intellectual property rights vary widely depending on the tribunal determining the rights and complexity of the dispute. There is no mechanism for security of costs. But an infringer who appeals may have to post a bond to secure the damages amount pending the outcome of the appeal.

Malaysia Small Flag Malaysia

There is no fixed costs. The costs would depend on the type and manner of enforcement. Costs are generally awarded to the winning party but this is at the discretion of the Court. Costs awarded is relatively low.

A defendant in any action may apply for security of costs. This would be the discretion of the Court.

Philippines Small Flag Philippines

Apart from the payment of the requisite filing fees, in cases where there is a prayer for an injunctive relief, the party applying for injunctive relief must file a cash bond to the effect that the applicant will pay to such party or person all damages which the latter may sustain by reason of the injunction or temporary restraining order if the Bureau should finally decide that the applicant was not entitled thereto. The cash bond is in an amount to be fixed by the Hearing Officer and approved by the BLA Director for infringement cases filed before the IPO BLA,

Under the IPV Rules, the BLA Director after formal investigation may impose the penalty of requiring an assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the BLA.

Japan Small Flag Japan

Basically, the defeated party shall bear the court costs. In the case of partial defeat, the burden of court costs on each party shall be determined by the court at its discretion. To recover attorneys’ fees a plaintiff needs to establish the amount of reasonable fees as damages. The amount of recoverable attorney’s fees depends on the complexity of the case and other circumstances. In many cases, the amount is around 10% of the financial damages awarded by the court.

If a plaintiff does not have any domicile, business office or other office in Japan, the court shall make an order to the effect that the plaintiff should provide security for court costs upon a petition by the defendant.

UAE Small Flag UAE

Costs of enforcement proceedings: see section 17/18 above

Costs recovery: UAE courts ordinarily award to the winning party a nominal amount as partial reimbursement of its legal fees. The winning party may however recover court fees.

Security for costs: UAE courts would order a claimant to provide security for costs only when issuing an interim attachment order at claimant's request (as per section 31 above).

Mexico Small Flag Mexico

Enforcement Proceeding

Cost (approximately)

Invalidation actions

$ 4,000 - $8,300 USD

Cancellation actions

$ 3,000 - $ 7,500 USD

Infringement actions

$ 6,500 - $ 15,500 USD

Criminal actions

$ 2,000 - $ 20,000 USD

There is not any cost recovery available for this kind of procedures but only for civil actions related with copyrights and related rights.

India Small Flag India

The entire cost of enforcement proceedings will include the official costs, as well as the professional fees for representation. While costs are often granted by the adjudicating court, these are symbolic and minimal. The punitive damages in intellectual property matters are usually not commensurate with the actual damages suffered by the Plaintiffs. Courts may require the deposit of monies with them, as security, however, this practice is typically used for money decrees, and not for costs as are granted in successful intellectual property actions.

In India, the realm of intellectual property law is developing quickly. Laws are TRIPS compliant, and evolving fairly swiftly. The balance the rights of creators and consumers is an important concern, which needs to be constantly kept in mind.

The smooth and consistent functioning of the Intellectual Property Offices is a vital step in the right direction. Further steps to take include the mandatory recording of security interests in any intellectual property, as well as a more cohesive online system.

Latvia Small Flag Latvia

Patents - Costs in each case differ and depend on the actions performed and time spent. Costs recovery is available only for Attorney’s at Law. A separate civil court action is required to recover the costs. Security may be required in case of interim injunction, the security is request by the court and the interim injunction may not come into force until the security is deposited.

Trade marks - Costs in each case differ and depend on the actions performed and time spent. Costs recovery is available only for Attorney’s at Law. There is no procedural mechanism enabling security for costs.

Vietnam Small Flag Vietnam

It is difficult to estimate the cost of enforcement because it depends on the type of IP rights involved, the degree of difficulty and the locality of infringement or of court. Regarding an estimate of cost, please see question 18 above. No provisions on security for cost is available.

Germany Small Flag Germany

In general, the cost of enforcement proceedings depend on the complexity of the proceedings, technical matter, service requirements to non-European defendants and the conduct of the other party.

The costs for IP right enforcement proceedings follow the general principle that the losing party bears the costs, i.e. the court fees and the costs of the successful party, in relation to the claim on which the respective party lost. In case of partial loss/win, the costs will be split accordingly. The reimbursement of the costs is based on the value of the matter in dispute and is a certain amount of fees stipulated under statutory law, i.e. it is usually not the actual cost incurred; in many cases, the actual cost incurred may be higher than the cost reimbursement.

Under Section 110(1) Civil Code, a claimant domiciled outside the EU or EEA must generally provide security for costs upon the defendant's request. However, there are several exemptions to this rule that are listed in Section 110(2) Civil Code. In patent law, this general provision is supplanted by the largely identical Section 81(6) Patent Act.

Malta Small Flag Malta

With regard to court fees and expenses associated with filing any court an action, as detailed in the answer to question 18, the Maltese Code of Organisation and Civil Procedure details these fees in a “Court tariff”. The Court tariff will cover court registration fees, fees for related services (e.g. service of documents), fees set for the filing of documents, and advocates’ and legal procurators’ fees (which are separate to lawyers’ professional fees).

Court fees and expenses as per the Court tariff are recoverable in the case of a favourable outcome which awards them in the applicant’s favour (or on a 50-50 basis, depending on the Court’s evaluation), whereas professional fees are not recoverable from the losing side.

Updated: August 2, 2018