V Hotel Pte Ltd v Jelco Properties Pte Ltd [2014] SGIPOS 1

In V Hotel Pte Ltd v Jelco Properties Pte Ltd, the Principal Assistant Registrar declined to exercise her discretion under rule 38 of the Trade Mark Rules to restore a trade mark application and grant extension of time for the applicant to file a statutory declaration setting out evidence in support of the registration of the application mark.

In this case, Jelco Properties Pte Ltd (the "respondent") opposed V Hotel Pte Ltd's (the "applicant") Singapore Trade Mark Application No. T10100458 for "V Hotel" ("Application Mark"). The applicant failed to file its Statutory Declaration ("SD") setting out evidence in support of the registration of the Application Mark by the deadline of 2 October 2013. Consequently, on 16 October 2013, the Intellectual Property Office of Singapore (the "IPOS") issued a notification to the parties stating that the Application Mark was deemed withdrawn pursuant to rule 33(3) of the Trade Mark Rules. Thereafter, the applicant applied for an extension of time to file its SD on 21 October 2013, 19 days after the deadline.

When the respondent objected to the applicant's request for an extension of time, the applicant sought an interlocutory hearing for its application for the Registrar of Trade Marks (the "Registrar") to exercise the discretion under rule 83 of the Trade Mark Rules to restore the Application Mark and for an extension of time to file its SD. Rule 83 provides that "Any irregularity in procedure which, in the opinion of the Registrar, is not detrimental to the interests of any person or party may be corrected on such terms as   the Registrar may direct". The Principal Assistant Registrar refused the application to restore the Application Mark and the request for an extension of time for the applicant to file evidence.

The applicant attributed the failure to file its SD by the deadline to a docketing error in the applicant's solicitors' database system, compounded by the fact that the solicitor-in- charge was away on reservist. The applicant's position was that it was an appropriate case for the Registrar to exercise his discretion under rule 83 because the delay was not inordinate, there was a good explanation for the oversight and the applicant should not be deprived of an opportunity to defend the opposition. The respondent would also not be prejudiced by an exercise of discretion under rule 83.

The respondent's position was that the applicant had not demonstrated exceptional or extenuating circumstances to override the overall consideration of public interest of certainty and transparency and the need to promote the expeditious disposal of disputes. The respondent had a legitimate expectation that the Application Mark was withdrawn based on the fact that the parties had received the IPOS' notification that the  Application Mark had been deemed withdrawn before the applicant's application for an extension of time and restoration of the Application Mark. The respondent argued that it would be prejudiced by an exercise of discretion under rule 83 to allow the restoration of the Application Mark.

The Principal Assistant Registrar held that under most circumstances, the overall consideration of public interest of certainty and transparency and the need to promote the expeditious disposal of disputed would warrant the Registrar not allowing the overstepping of time limits in the legislation. While the delay of 19 days was not inordinate, it was also not short. In essence, the delay was caused by an administrative error and the fact that the solicitor-in-charge was away on reservist did not constitute extenuating circumstances that would merit an exercise of discretion since cover arrangements were in place. The respondent would be prejudiced if the Application Mark was restored because the IPOS' notification of the deemed withdrawal of the Application Mark would have led the respondent to believe that the Application Mark had been deemed withdrawn. There was also public interest in ensuring that rules relating to procedure are followed, especially in contentious proceedings.

Comment

This decision serves as a reminder that timelines issued by the IPOS should be strictly adhered to, especially in contentious proceedings, and the Registrar would exercise the discretion under rule 83 only in very limited circumstances. It affirms earlier IPOS decisions which have held that extenuating circumstances must be shown before the Registrar will exercise discretion under rule 83 to restore trade mark applications and grant extensions of time. This is particularly so where the applications for the Registrar to exercise discretion under rule 83 are made after the IPOS has notified parties of the failure to comply with the prevailing timeline.