Case Details
- Citation: [2021] SGIPOS 1
- Court: Intellectual Property Office of Singapore
- Date: 2021-01-27
- Judges: Principal Assistant Registrar Sandy Widjaja
- Plaintiff/Applicant: BEABA
- Defendant/Respondent: Biba (Zhejiang) Nursing Products Co., Ltd
- Legal Areas: Trade marks and trade names – Interlocutory Hearing
- Statutes Referenced: Trade Marks Rules (Cap. 332, 2008 Rev. Ed.)
- Cases Cited: [2002] SGIPOS 8, [2005] SGIPOS 7, [2009] SGIPOS 8, [2010] SGIPOS 13, [2011] SGIPOS 10, [2011] SGIPOS 16, [2011] SGIPOS 20, [2013] SGIPOS 3, [2014] SGIPOS 1, [2014] SGIPOS 4
- Judgment Length: 9 pages, 3,273 words
Summary
This case involves an application by BEABA for an extension of time to file evidence in a trade mark opposition against Biba (Zhejiang) Nursing Products Co., Ltd's application to register a trade mark. The Intellectual Property Office of Singapore (IPOS) had to determine whether BEABA's late request for an extension could be allowed under the Trade Marks Rules.
What Were the Facts of This Case?
Biba (Zhejiang) Nursing Products Co., Ltd (the Applicant) sought to register a trade mark on 5 May 2019. BEABA (the Opponent) filed a notice of opposition to the trade mark application on 11 November 2019.
At a Case Management Conference on 28 February 2020, the Registrar set deadlines for the parties to file their respective evidence in the form of statutory declarations. The Opponent was given a deadline of 28 September 2020 to file its evidence, with a final 4-month extension granted on 15 June 2020.
However, the Opponent failed to file any evidence by the 28 September 2020 deadline. On 8 October 2020, 8 working days after the deadline, the Opponent filed a late request for a further extension of time to file its evidence. The Applicant objected to this late request.
What Were the Key Legal Issues?
The key issue was whether the Opponent's late application for an extension of time to file its evidence could be allowed under the Trade Marks Rules.
The applicable provision was Rule 83, which states 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."
How Did the Court Analyse the Issues?
The Registrar noted that the term "irregularity in procedure" in Rule 83 includes matters in respect of time. Therefore, Rule 83 was applicable to the Opponent's late request for an extension.
The Registrar considered the relevant factors in deciding whether to allow the late request, including: the length of the delay, the reasons for the delay, the overall conduct of the Opponent, the stage of the proceedings, the degree of prejudice to the Applicant, whether there were exceptional circumstances, and the balance between the public interest in certainty and transparency versus the need for a fair adjudication on the merits.
The Registrar found that the delay was only 8 working days, and that the Opponent's failure to file the evidence on time was due to a clerical error by the Opponent's solicitor. The Opponent had filed the late request immediately upon discovering the error, and had subsequently filed the evidence. The Registrar also noted that the Applicant would not suffer significant prejudice, as it was already aware of the Opponent's objections to the trade mark registration.
While the Registrar acknowledged that the COVID-19 pandemic and related disruptions were not an excuse for missing deadlines, the Registrar found that the circumstances surrounding the Opponent's mistake, including the pandemic backdrop and the Opponent's diligence in rectifying the error, warranted the exercise of discretion under Rule 83 to allow the late request.
What Was the Outcome?
The Registrar allowed the Opponent's late request for an extension of time to file its evidence in the trade mark opposition. The Opponent was granted the extension, and the opposition proceedings could continue.
Why Does This Case Matter?
This case provides guidance on the application of Rule 83 of the Trade Marks Rules, which allows the Registrar to correct irregularities in procedure that are not detrimental to the parties. The decision highlights the factors the Registrar will consider in exercising this discretion, particularly in the context of missed deadlines due to clerical errors or disruptions caused by the COVID-19 pandemic.
The case demonstrates the Registrar's willingness to take a pragmatic and flexible approach in appropriate circumstances, balancing the need for procedural certainty with the interest of justice in allowing parties to have their cases heard on the merits. This approach is important for ensuring a fair and efficient trade mark opposition system, especially during challenging times.
The case also underscores the importance of diligence and proactivity by parties in rectifying any procedural errors, as this can be a key factor in the Registrar's decision-making process.
Legislation Referenced
Cases Cited
- [2002] SGIPOS 8
- [2005] SGIPOS 7
- [2009] SGIPOS 8
- [2010] SGIPOS 13
- [2011] SGIPOS 10
- [2011] SGIPOS 16
- [2011] SGIPOS 20
- [2013] SGIPOS 3
- [2014] SGIPOS 1
- [2014] SGIPOS 4
Source Documents
This article analyses [2021] SGIPOS 1 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.