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26 August 2020TrademarksRory O'Neill

Gillette can’t claim full, ‘excessive’ legal costs in Bic dispute

Gillette can only recover £1,050 ($1,380) of its £52,000 legal costs incurred defending a trademark opposition filed by French manufacturer  Société Bic.

In a  decision issued last week, the UK Intellectual Property Office (IPO), said the dispute over Gillette’s ‘Sunny’ mark, covering razors and shaving creams, didn’t justify a departure from normal procedure for awarding costs.

Société Bic, which withdrew its opposition due for commercial reasons, argued that Gillette’s cited legal fees of £52,000 were “excessive”.

This was especially as the “most significant piece of work required by the applicant during the course of proceedings would have been the preparation of the expert report, the costs of which were excluded from the £52,000 sum,” the French company claimed.

Gillette had asked for a contribution of £5,050 to be paid towards its total costs incurred defending the opposition.

Under IPO rules, the official handling the dispute said, the actual costs incurred by an applicant were not relevant to the contribution that Gillette was entitled to.

“Costs before the tribunal are intended to be contributory rather than compensatory; they are not intended to compensate the successful party for the actual costs incurred,” the IPO official wrote.

The IPO broke down Gillette’s request according to the different stages of the proceedings. In one example, the razor manufacturer claimed the maximum sum of £3,300 for a case management conference (CMC).

Ultimately, the IPO awarded only 10% of that figure for this stage of the proceedings, finding that: “An award of costs in relation to a CMC which lasted only around 1 hour, cannot possibly justify an award in the amount claimed by the applicant. As correctly noted by the opponent, it would be extremely unusual for such an award to be made even in respect of a substantive main hearing.”

Société Bic is required to have paid the £1,050 towards Gillette’s costs within 21 days of the decision having been issued on August 19, or within 21 days of the conclusion of any potential appeal proceedings.

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