31 March, 2012

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

Choice Fortune Holdings Ltd v Seiko Holdings Kabushiki Kaisha [2011] SGIPOS 20 (“Choice Fortune”)

 

The Applicant’s mark was advertised for opposition on 19 August 2011. Under Rule 29(1) of the Trade Mark Rules (“the TMR”), the Applicant had until 19 October 2011 to oppose or request an extension of time. The Opponents missed this deadline and on 25 October 2011, wrote to the Registrar seeking an extension of time to file the Notice of Opposition on the basis that they had just been instructed by their clients who were considering opposing the subject application. On 11 November 2011, the Registrar granted an extension of time up to 19 December 2011 to file the Notice (and which is in line with the maximum statutory timeline as prescribed by the TMR). However, on 16 November 2011, the Applicants wrote to the Registrar objecting to the out of time request alleging that it was untrue that the Opponents had just been informed of the publication as they had first written to the Applicants on 11 October 2011.

 

The Registrar is empowered under Rule 83 of the TMR, to correct irregularities “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 Opponents argued that the Applicants were not prejudiced by the irregularity, as the Opponents had evinced their intention to oppose the registration of the Applicant’s mark in a letter dated 11 October 2011. Further, the Opponents submitted that there was already an ongoing dispute between the parties, as evidenced by a series of oppositions by the Opponent to the Applicants’ marks in other jurisdictions. They also argued that the extension of time, if granted, would be within the maximum statutory time frame allowed for the filing of the Notice of Opposition (i.e. 4 months from the initial advertisement of the acceptance of the Applicant’s mark).

 

The Applicants on the other hand, contended that they would be unfairly prejudiced should the extension be granted as they would be denied the certainty and finality that the rules provided. The Applicants further relied on the case of Neutrigen Pte Ltd v Neutrogena Corp [2005] SGIPOS 7 (“Neutrigen”) in support of their contention that an extension of time would be unfairly prejudicial.

 

In Neutrigen, the Registrar denied the application for an extension of time, as the Applicants were already aware of the subject application and should have monitored its progress closely so that they could oppose the same at the appropriate time. Their failure to conduct appropriate checks was held to be inexcusable. In that case, the request for an extension of time was filed 6 working days after the expiration of the initial deadline.

 

Notwithstanding Nuetrigen’s case, in this instance, the Registrar granted the extension of time, having taken into consideration the following material factors: (i) the Applicants were, at all material times, aware of the Opponents’ objection to the Application Mark; (ii) the delay was only 4 working days unlike Neutrigen’s case where the delay was for 6 days; (iii) that the extension, if granted, was still within the maximum statutory timeline for the filing of the Notice of Opposition.

 

The Registrar concluded that there was therefore no prejudice to the Applicants should the extension be allowed, and exercised her discretion under rule 83 to allow the extension of time, despite the fact that the request was made out of time. 

 

Commentary

 

In deciding whether the Registrar would exercise its general discretion provided under the TMR to correct an irregularity in procedure, it is clear that the likelihood of prejudice to the parties, is a material consideration, which would weigh heavily in favour of the applicant.

 

However, there is some difficulty in reconciling the positions adopted in Choice Fortune, as compared to Nutrigen. The only material difference in fact between Neutrigen and Choice Fortune appears to be the 2 days’ difference in seeking the extension of time. The parties in Choice Fortune were already involved in an ongoing dispute. Likewise, the Applicants in Neutrigen were equally aware of the Opponents’ intention to oppose the registration of Nutrigen’s mark. Although the Registrar in Neutrigen did recognise that extensions of time could be granted where there are “goods and sufficient reasons”, she was not persuaded that the Applicant would not be prejudiced by the extension of time, since the Applicant was already aware of the Opponent’s intention to oppose the Applicants’ mark. On the contrary, she held that the Trade Mark Rules provide deadlines for the performance of every step in the opposition process so that the parties have the benefit of the certainty and the finality that the Rules provide.

 

It is unclear where the line between Neutrigen and Choice Fortune is to be drawn where requests for extensions of time are concerned.

 

However, it appears most unlikely that the Registrar would allow the correction of any irregularity if this would have the effect of extending any maximum statutory timeline as prescribed by the trade marks legislation.

 

It is best therefore, as a matter of practice, to put in place, appropriate safeguards and processes to monitor and ensure strict adherence to timelines in the conduct of opposition proceedings as even simple administrative oversights or mere carelessness, can result in dire consequences.

 

 

For further information, please contact:

 

Lorraine Tay, Partner, ATMD Bird & Bird

lorraine.tay@twobirds.com

 

 

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