The recent decision by the Intellectual Property Office of Singapore (IPOS) between V Hotel and Jelco Properties concerning an Application for Restoration of Trademark Application and Request for Extension of Time (EOT), shows that IPOS continues to take a stringent position with regard to procedural defaults such as an attorney’s delay in responding to IPOS within the deadline.
Trademark Application No. T1010045B for the mark (application mark) in the name of V Hotel (applicants) was published in the Trademarks Journal on July 1, 2011. An opposition was filed by Far East Hospitality Services (the opposition mark was later assigned to Jelco Properties, the respondents). The applicants were required to file their evidence within the extended deadline of October 2, 2013.
However, no evidence was filed by the applicants by October 2, 2013. On October 16, 2013, IPOS wrote to the applicants that the application was deemed withdrawn. Five days after receipt of the aforementioned letter, the applicants wrote to IPOS, submitting the form for EOT and explaining that the deadline was missed on account of a docketing error which was compounded by the solicitor-in charge going for a mandatory military reservist camp. On October 28, 2013, the applicants submitted their statutory declaration for the restoration of the subject application and sought leave for an interlocutory hearing.
The applicants submitted that, as confirmed by Asian Aisle Pte Ltd v Ricegrowers Co-operative LimitedSGIPOS7, Rule 83 of the Trademark Rules (Rules) enables the Registrar to allow a request for an EOT if such extension is in the best interest of the parties. Further, the applicants set out the principles expounded by the Court of Appeal in The Tokai Maru 2SLR(R)646, which the Registrar ought to adopt while exercising his powers under Rule 83:
- The “litigant should not be deprived of his opportunity to…have determination of the issues on merits as a punishment for a breach of these Rules” unless the other party is prejudiced and cannot be compensated in costs;
- It is “rarely appropriate” to deny a party an EOT “where the denial would have the effect of depriving him of his defence because of a procedural default” and lead to prejudice that cannot be compensated in costs.
The applicant further submitted that there exists a “good explanation for the oversight” and no prejudice was caused to the respondents. They argued that in the interest of justice, procedural defaults should not be allowed to prevail over substantive justice, and blind adherence to procedural requirements would be “unnecessarily draconian” in the present matter.
The respondents argued that Rule 83 mandates a balancing exercise between “public interest that rules relating to procedure are followed” for certainty and finality, on one hand, and “the need to ensure the determination of the issues on merits in the interest of justice” on the other hand. Thus, unless exceptional and extenuating circumstances exist, the public interest to promote certainty, finality and expeditious disposal of cases requires that IPOS ensure strict compliance with procedural time limits.
They further submitted that bona fide oversight or omission by the solicitor owing to incorrect docketing cannot be considered compelling enough in the present circumstances. The legitimate expectation on the part of the respondents that the opposition should be dealt with in due compliance of the Rules, together with the public interest associated with maintaining the procedural sanctity of the opposition proceedings, far outweigh the applicant’s delayed actions in defending their trademark application.
The Registrar refused the restoration of the subject trademark application and noted that there is no “general discretion” granted to the Registrar to extend prescribed time limits. These time limits are to be construed strictly unless exceptional circumstances dictate otherwise. The Registrar recognized the balancing prowess associated with the use of discretion and opined that the applicants had been unable to show the existence of compelling circumstances which made it pertinent for the Registrar to allow the extension of time superseding the public interest associated with deadlines and the legitimate expectation of the respondents that the sanctity of the opposition will be maintained.
This decision underscores the fact that while the Registrar has discretionary powers, it neither implies nor justifies the use of these powers without proper reason. Although there is no rule of law to define what error can be pardoned, it is important for party litigants to note that procedural defaults and bona fide errors and delays will not be condoned unless the applicant can establish an overall picture which is able to warrant the compassion of the Registry.
This article was first published in Asia IP magazine on February 28, 2014.