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Singapore: Objections to Counter-Statements

22nd May, 2014

In the case of BRG Brilliant Rubber Goods (M) Sdn. Bhd. v The Polo/ Lauren Company, L. P., the Intellectual Property Office of Singapore (IPOS) refused Applicant’s application to restore its’ trade mark applications and to apply for an extension of time to file and serve counter–statements.

BRG Brilliant Rubber Goods (M) Sdn. Bhd. (hereinafter referred to as “the Applicant”) applied to register the trade mark two types of “POLO” trade marks in Singapore on 1 April 2013. The application numbers assigned to these applications are T1305469I and T1305467B (hereinafter referred to the “Opposed Applications”). The applications were accepted and they were published for opposition proceedings on 26 July 2013.

The Polo/ Lauren Company, L. P., (hereinafter referred to as “the Respondent”) opposed the Opposed Applications on 17 September 2013 and the Notices of Opposition were served on the same day.

The due date for the Applicant to serve the Counter-Statements to the Respondent was 18 November 2013. However, the Applicant had sent the Counter-Statements to Respondent via A.R. registered post and the Respondent had only received the Counter-Statements on 25 November 2013 i.e. seven days after the two-month deadline.

As the Counter-Statements were not served to the Respondent within the deadline, the Opposed Applications were deemed to be withdrawn.

The Applicant had then applied to IPOS for the Registrar to exercise his rights to restore the Opposed Applications and to allow for an extension of time for serving the Counter-Statements.

However the Respondent disagreed to the Applicant’s request for the extension of time when there is no fundamental issue relating to the request made. At the time when Counter-Statements were served, the Respondent pointed out that there is no authorised party who has locus standi to represent the Applicant in Singapore. The Respondent claims that it was a third party who acted for the Applicants to file and serve the Counter-Statements and since the third party is not an appointed agent for the Applicant, thus the serving of the Counter- Statements is invalid.

The Registrar in this matter has the discretion to restore an application that was withdrawn earlier under the Trade Marks Rules. However, the Registrar will only exercise his rights when there is a valid argument or reasoning for an extension of time.

IPOS held that the Registrar has no reason to allow the request for an extension of time. IPOS had therefore the Opposed Applications were held to be withdrawn.

The IPOS awarded costs to the Respondent a total of S$500.00 being the cost of preparation for the opposition of the Opposed Applications and had instructed the Applicant to pay the cost to the Respondent within one month.