Who should pay for a court examination in the field of intellectual property?

As a rule, during the consideration of intellectual property cases, it is impossible to avoid conducting a forensic examination. In this article, we suggest a more detailed look at the following issues:

• what is an expertise in the field of intellectual property and why is it necessary, the expert’s conclusion;
• conducting an examination at the initiative of the plaintiff;
• in which cases the court appoints an expert examination and how it affects the case review;
• what to do if there are two opposing expert opinions in the case;
• the procedure for paying for the examination and what happens if it is not paid.

Examination in the field of Intellectual Property

Examination in the Field of Intellectual Property is a study conducted to determine specific characteristics of trademarks, inventions, or other intellectual property objects. It concerns objects involved in conflicts and legal disputes. For example, it may be a trademark, trade name, or invention that belongs to you and/or your opponent or that you are using.

Examination of intellectual property objects can be conducted in cases where it is necessary to determine:

• whether two trademarks are similar and likely to be confused;
• whether trademarks have been used in a domain name;
• whether a utility model meets the “novelty” criterion;
• whether designations could mislead consumers regarding the identity of the manufacturer or service provider;
• whether a product is new compared to another product;
• and in other cases.

In other words, the examination must be conducted to analyze specific objects. The results of such research can serve either as evidence of an opponent’s violation of IP rights or, conversely, as proof to refute the opponent’s claims against you.

The expert’s opinion is a description of the conducted research, the conclusions drawn from it, and well-reasoned answers to the questions posed to the expert. Simply put, the opinion is the result of the conducted examination.

Conducting an examination at the plaintiff’s initiative

The examination can be conducted even before filing a lawsuit, and the expert’s opinion can be submitted either together with the statement of claim or after the court proceedings have been initiated. In this case, the examination will not affect the timeline for the court’s review of the case.

This examination will be carried out at an expert institution or by an expert chosen independently by the plaintiff at a cost acceptable to them. Moreover, the plaintiff determines the list of questions to be addressed to the expert.

A drawback of this approach is that the expert may not have access to all materials of the court case.

The examination is appointed by the court

This happens in the following situations:

• it is impossible to establish the facts of the case without an examination;
• none of the parties to the case has provided an expert opinion;
• the parties have provided expert opinions, but they contradict each other or raise doubts about their accuracy;
• a party to the case was unable to provide an expert opinion on time due to valid reasons;
• both parties (the plaintiff and the defendant) filed a motion to appoint an examination.

When an examination is appointed by the court, the expert or expert institution is chosen by the parties by mutual agreement. If no agreement is reached, the court selects the expert. Under certain conditions, the court has the right to independently designate the expert or expert institution.

The court determines the questions for the examination. However, the parties have the right to propose questions to the court that require clarification through the expert’s opinion.

The materials of the court case are sent to the expert or expert institution. During the examination, the proceedings are suspended—court sessions are not held, and motions are not considered. The duration of the suspension is not strictly regulated and depends on the complexity of the research. In practice, intellectual property examinations can be conducted within 20–30 days or take several months.

Two  contradictory expert opinions

As judicial practice shows, if a case involves two contradictory expert opinions, the following actions may be taken.

• The first option is for the court to appoint a third forensic examination. For example, in the Resolution of the Northern Commercial Court of Appeal dated May 30, 2024, in case No. 910/14228/21, the court, on its own initiative, appointed a third expert examination of intellectual property objects. This examination concerned the similarity of trademarks, the relatedness of goods, and the likelihood of misleading consumers regarding the manufacturer.
• The second option is for the court to assess both opinions and reject one of them. For instance, this approach was taken by the Commercial Cassation Court within the Supreme Court in case No. 910/16718/20, which concerned the invalidation of a trademark certificate of Ukraine (resolution dated August 17, 2023).

Ultimately, the court decides which course of action to take in each specific case.

Payment for the examination

If the examination is conducted before filing the lawsuit, the expert’s services are paid for by the party requesting it—the plaintiff. Since the party commissioning the examination independently selects the expert or expert institution and learns the conditions and costs in advance, the service invoice is not a surprise.

When the examination is appointed by the court, the costs are assigned to either the plaintiff, the defendant, or shared equally between both parties. Who will bear the cost depends on the circumstances of the specific case.

If the court selects the expert institution, the cost of the examination is initially unknown. The price depends on various factors such as the complexity of the research, the volume of materials, and the type of examination. Therefore, the final cost may be an unpleasant surprise.

What happens if the expert’s fee is too high and the obligated party refuses to pay?
In such cases, the examination is not conducted, the case materials are returned to the court, and the proceedings are resumed. Typically, the court first asks the non-paying party to provide a written explanation for their inaction. A fine may also be imposed for failing to fulfill obligations or evading actions required by the court (ranging from 876 UAH to 29,200 UAH). In most cases, the court continues to review the case based on the available materials without the expert examination.

The good news is that the expenses for the examination can be reimbursed. The party who wins the legal dispute has the right to recover these costs. There is a specific procedure for reimbursement of legal expenses, and the losing party is responsible for covering them.

We emphasize that the party in whose favor the court renders the decision is entitled to reimbursement for the examination costs, even if the examination was conducted before filing the lawsuit. This applies particularly when the court considers the expert’s opinion as evidence. This position is confirmed in the Resolution of the Grand Chamber of the Supreme Court dated November 22, 2023, in case No. 712/4126/22.

Conclusions