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The Importance of Adhering to Timelines in Trade Mark Opposition Proceedings.

6 December, 2011

 

 

Trade mark oppositions, like any court proceeding, are governed by well-defined procedural rules that are designed to promote certainty, transparency and the expeditious disposal of disputes. On the other side of the equation, the strict adherence to procedural rules and timelines may result in a premature determination of a dispute, thereby ending what would otherwise be a truly meritorious claim. Balancing both interests is often a difficult exercise and entails a careful consideration of the facts by the Registrar.
 
The Trade Marks Registry recently had the opportunity to review the law on procedural timelines and its discretionary power to correct procedural irregularities. The message following from its decision is clear: the overall consideration of public interest of certainty and transparency and the need to promote the expeditious disposal of disputes would warrant the Registrar not allowing the overstepping of time limits in the legislation under most circumstances.
 
In Alibaba Group Holding Limited v Singapore Press Holdings Limited [2011] SGIPOS 9, the deadline to oppose or to request an extension of time to oppose fell on 18 May 2011. The prospective opponents (Singapore Press Holdings Limited) wrote to the applicants (Alibaba Group Holding Limited) on 18 May 2011 seeking their consent to an extension of time to oppose and the applicants consented to the request. The opponents then filed a formal application with the Trade Marks Registry requesting for an extension of time to oppose on 24 May 2011, which was four days after the statutory deadline of 18 May 2011. The applicants thereafter objected to the late filing of the application.
 
The Registrar noted the unique circumstances of the case, namely, that the applicants had already consented to an extension of time to oppose and that the delay was only four days, and allowed the application. Notwithstanding, the Registrar nevertheless stressed that “[had] the Applicants not given their consent upon knowledge that a written request for extension of time was made in time…, the outcome of this matter would probably have been different” (emphasis added).
 
Whilst the Registrar has clarified that “[t]his decision does not serve as a general precedent for future prospective opponents who fail to seek consent on time and/or fail to file their requests for extension of time… on time”, it certainly serves as a timely reminder of the importance of adhering to procedural timelines.
 
 
 
For further information, please contact:
 
Arthur Yap, ATMD Bird & Bird
arthur.yap@twobirds.com
 
 

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