Singapore: Request For Trademark Restoration Refused

August 19th, 2013

 

In the case of Tilaknagar Industries Ltd v Distileerderij en Likburstokerij Herman Jansen BV, the Intellectual Property Office of Singapore (IPOS) refused Tilaknagar Industries Ltd’s application for restoration of trademark applications and for request of extension of time to file statutory declaration.

Tilaknagar Industries Ltd (hereinafter referred to as “the Applicant”) had applied for three trademark applications (hereinafter referred to as “the Application Marks”) which were accepted for registration and published in the Trade Marks Journal on 11 March 2011.

Distileerderij en Likburstokerij Herman Jansen BV (hereinafter referred to as “the Respondent”) filed its own trademark application (hereinafter referred to as “the Intervening Application”) on 11 July 2011 for the same specification of goods. On the same day, the Respondent filed its Notice of Opposition to oppose the registration of Application Marks.

To facilitate the just, expeditious and economic disposal of the case, a case management conference (‘CMC’) was held before the Registrar on 2 April 2012.

The Registrar directed that maximum CMC timelines (as opposed to statutory deadlines) for filing the Respondent’s evidence or to request for an extension of time to file such evidence would be by 2 October 2012, whilst the Applicant's evidence should be filed up to a maximum of six (6) months thereafter, the latest date therefore estimated to be on 2 April 2013.

The Respondent then filed its evidence of opposition on 1 October 2012 and the Applicant’s statutory deadline to file their evidence or request for an extension of time to file such evidence thus fell on 3 December 2012.

However, the Applicant did not take any action by this deadline and consequently, the Registrar, on 28 January 2013, notified the parties that the Application Marks have been deemed withdrawn.

On 8 February 2013, the Applicant wrote to the Registrar requesting for an extension of time to file their evidence and explaining the reasons for the delay for which consent was sought from the Respondent. However, the Respondent refused to grant their consent to the extension of time and to the reinstatement of the Application Marks, following which the present interlocutory hearing was fixed before the Registrar.

The Applicant submitted that the Registrar had the power to grant a request for an extension of time as well as to restore the Application Marks. The Respondent objected this claim stating that the Registrar did not have any power to grant an extension of time to file the Applicant's statutory declaration beyond the statutory maximum of six months from the date of receipt of the Respondent's statutory declaration. The Respondent submitted that since the Respondent's statutory declaration was filed on 1 October 2012, the Applicant should have either filed their statutory declaration pre-emptively or alternatively, requested for an extension of time by 1 April 2013 at the very latest.

The Registrar noted that the Registrar has broad discretion under Rule 83 of the Trade Marks Rules to correct “any irregularity in procedure, which in the opinion of the Registrar was not detrimental to the interests of any person or party”. Accordingly, the Registrar had the power to hear the present application for an extension of time to file evidence under Rule 83 of the Trade Marks Rules as the failure to file a request of time to file evidence within the stipulated deadline was an irregularity in procedure.

 

The Applicant explained in their statutory declaration dated 8 February 2013 that the solicitor in charge of the matter had, upon reviewing the firm's calendar on 1 October 2012, obtained the mistaken impression that the timeline issued by the Registrar during the CMC on 2 April 2012 was the "fixed and final deadline" for the Applicant to file their evidence. The Applicant submitted that this was an “oversight due to the wrong recordal of date” and that whilst the delay was “by no means short”, the court should consider the overall justice of the case for this proposition. The Applicant submitted that this was a one-off incident and it had not overlooked such deadlines in the past.

The Registrar stated that a solicitor’s bona fide mistake is one of the factors in the Registrar's overall consideration in deciding whether to exercise discretion to allow an extension of time, and some extenuating circumstances must be offered in explanation for the oversight of the solicitor or some explanation which could mitigate or excuse the oversight. The Registrar explained that the differences between the CMC timelines issued at the CMC and statutory deadlines in the Trade Marks Rules have been explained in HMD Circular 4/2010 and therefore, a solicitor would be aware of the plain application of the Trade Marks Rules and HMD Circular 4/2010. Hence the Registrar adjudged the Applicant as having failed to persuade the Registrar that there were any such extenuating circumstances or any explanation that mitigated the solicitor's failure to monitor the statutory deadline.

The Applicant also submitted that it would be prejudiced in that the burden of proof would fall on it in having to contest the Intervening Application, which would lead to a premature determination of the parties' rights. The Applicant tendered the Provisional Refusal of Protection dated 13 December 2011 showing that the Singapore Trade Marks Registry had rejected the Intervening Application because of the pending Application Marks. The Applicant submitted that the Respondent would not suffer any prejudice if the extension of time was granted because they had already known of the existence of the Application Marks since 13 December 2011.

The Respondent argued that it would suffer grave prejudice if the present application was granted because it would lose their priority for the Intervening Application, and the loss of this priority was not something which can be compensated by costs; and as such, the Registrar should only consider prejudice to the Respondent and not prejudice to the Applicant.

However, the Registrar rejected the Respondent’s claims stating that the Registrar would have to consider the question of prejudice with a view to balancing both parties' competing interests. The Registrar further held that that the Applicant had not explained how the filing of the statutory declaration would be vital to their case, neither had it presented any draft statutory declaration or explained the intended contents of the statutory declaration as at the date of the hearing, or to date. It was therefore difficult to see how the Applicant would be prejudiced other than having its own Application Marks deemed withdrawn, which was a direct factual consequence of their default. The Registrar further noted that even after the receipt of Registrar’s notification that the Application Marks had been deemed withdrawn, the Applicants waited a further 11 days before requesting for an extension of time to file their evidence.

Accordingly, the public interest in the adherence to the rules of procedure and the sanctity of the Registrar's notification outweighed the Applicant’s interest in defending the opposition proceedings. Furthermore, the long delay and the lack of good and sufficient reasons to justify such delay weighed heavily against the Applicant in this case. As a result, the Applicant's application to restore the Trade Mark Applications and the request for an extension of time to file their statutory declaration were refused.