Case Details
- Citation: [2021] SGIPOS 5
- Court: Intellectual Property Office of Singapore
- Date: 2021-05-28
- Judges: Principal Assistant Registrar Sandy Widjaja
- Plaintiff/Applicant: Symphony Holdings Limited
- Defendant/Respondent: Skins IP Limited
- Legal Areas: Trade marks and trade names – Interlocutory Hearing
- Statutes Referenced: Trade Marks Rules (Cap. 332, 2008 Rev. Ed.)
- Cases Cited: [2020] SGIPOS 7, [2021] SGIPOS 1, [2021] SGIPOS 5
- Judgment Length: 9 pages, 2,949 words
Summary
This case involves an interlocutory decision by the Intellectual Property Office of Singapore (IPOS) regarding an application for an extension of time to file evidence in a trade mark revocation proceeding. The applicant for revocation, Skins IP Limited, objected to the late filing of the extension request by the registered proprietor, Symphony Holdings Limited. The key issue was whether the late filing could be corrected as an "irregularity in procedure" under the Trade Marks Rules.
What Were the Facts of This Case?
The main proceeding was an application by Skins IP Limited to revoke Symphony Holdings Limited's registered trade mark. At a case management conference in February 2020, the Registrar set deadlines for the parties to file their respective evidence. After four extensions, Skins IP Limited filed its evidence on 10 December 2020, with the deadline for Symphony Holdings Limited to file its evidence being 10 February 2021.
On 16 February 2021, four working days after the deadline, Symphony Holdings Limited filed a late request for an extension of time to file its evidence. Skins IP Limited objected to this late filing. The Registrar initially indicated she was not inclined to allow the late request, but after further representations from Symphony Holdings Limited, she decided to hold an interlocutory hearing to determine the issue.
What Were the Key Legal Issues?
The key legal issue was whether Symphony Holdings Limited's late application for an extension of time to file its evidence could be allowed under Rule 83 of the Trade Marks Rules, which allows the Registrar to correct "any irregularity in procedure" that is not detrimental to any party.
How Did the Court Analyse the Issues?
The Registrar considered several relevant factors in determining whether to allow the late extension request, including the length of the delay, the reasons for the delay, the overall conduct of the applicant, the stage of the proceedings, the prejudice to the opposing party, and the public interest.
The Registrar found that the delay was only 4 working days, and that this delay was due to an oversight by Symphony Holdings Limited's instructing firm, BMGNY Pty Ltd, as a result of the principal, Ms. Gorton, being preoccupied with her son and husband exhibiting COVID-19 symptoms in the days leading up to the deadline. The Registrar accepted that this was an exceptional circumstance that contributed to the late filing.
The Registrar also noted that the late request was filed before the pre-hearing review, the evidence for the revocation was now ready to be filed, and the prejudice to Skins IP Limited could be compensated by costs. Additionally, the Registrar observed that Skins IP Limited had itself previously been granted four extensions of time.
While the Registrar acknowledged that the monitoring and management of deadlines is a core part of an IP firm's work, she stated that the COVID-19 pandemic should be viewed with "some degree of compassion" when considering mistakes that occur during this period.
What Was the Outcome?
The Registrar ultimately allowed Symphony Holdings Limited's late request for an extension of time to file its evidence, finding that the late filing was an "irregularity in procedure" that could be corrected under Rule 83 of the Trade Marks Rules, as it was not detrimental to Skins IP Limited's interests.
Why Does This Case Matter?
This case provides guidance on the Registrar's approach to dealing with late filings and extension requests in trade mark proceedings, particularly in the context of the COVID-19 pandemic. The decision highlights that the Registrar will take into account exceptional circumstances, such as the impact of COVID-19 on a party's ability to meet deadlines, when determining whether to allow an irregularity in procedure to be corrected.
The case also underscores the importance for parties to have robust systems in place to monitor and manage deadlines, as the Registrar will generally expect parties to make appropriate arrangements to ensure compliance. However, the decision suggests that the Registrar will exercise some flexibility and compassion when considering mistakes that occur during the unprecedented challenges posed by the pandemic.
Overall, this case serves as a useful precedent for trade mark practitioners in Singapore, demonstrating the Registrar's willingness to take a pragmatic and balanced approach when dealing with late filings, provided the circumstances warrant such an approach.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2021] SGIPOS 5 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.