The Intellectual Property Office of Singapore (“IPOS”) has seen various different circumstances arising from the grey areas of the Trademarks Rules since the relevant amendments were made eleven years ago. One of the main problems arising in this regard relates to the issue of consent to late requests for Extensions of Time during Opposition proceedings. The Registrar is at times faced with difficulties in balancing the needs of adhering to procedural requirements against the need for fair adjudication. However, over the years, a number of cases have helped shed some light in this area.
One of the cases that hits the nail on the head is the case between Singapore Press Holdings Ltd (Opponent) and Alibaba Group Holding Ltd (Applicant). Here, the Applicant’s trademark was accepted and advertised for Opposition purposes on 18 March 2011. As such, pursuant to Singaporean Trademark law, an Opposition must be filed within 2 months from the advertisement date. In this case, the Opponent had requested, in writing, for an extension of time to file a Notice of Opposition from the Registrar, and also sought the Applicant’s consent to do so on 18 May 2011. The request to the Registrar was only made by way of correspondence, and Form TM 48 was not filed. The Applicant consented to the Opponents request on 19 May 2011. The Opponents had then informed this to the Registrar three days later and filed the formal form requesting for an extension of time (TM 48) on 24 May 2011.
Due to the late filing of Form TM 48, 4 working days after the deadline, the Registrar sought consent from the Applicant to the same. However, the Applicant then objected to the late request, on the basis that the Opponent had failed to comply with the relevant procedural requirements of this matter by filing the relevant documents late.
Pursuant to this, the Opponent defended their position by highlighting the fact that the Applicant had already provided their consent on the 19 May 2011, and as such, there would be no prejudice to the Applicant should the late request be allowed. The Opponents submitted further that disallowing the application for an extension of time would pre-judge the course of the tentative proceedings and contribute to public prejudice. Therefore, in this matter, the need to have a fair judgement is far more important than giving weight to the procedural inaccuracy that had taken place as it is relatively minor.
The Applicant disagreed however, and stated that they had initially consented to the extension of time on the basis that the Opponent would adhere to the procedures set by the Trademarks Rules. Therefore, the fact that they were aware of the Opponent’s intention to request for an extension of time should not justify the Opponent’s non-adherence of the rules. They further submitted that the delay in filing Form TM 48 had led them into believing that their mark had not been opposed to. As such, to allow the extension of time, despite the lack of a good and sufficient reason for the late request, would be prejudicial to the Applicant.
The Registrar, exercising their discretion, allowed the late filing of Form TM 48 and granted the extension of time for the Opponents to file their Notice of Oppositions by 18 July 2011.
The Registrar, in reaching their decision, viewed that the Applicant would not be prejudiced by the late extension of time, as not only did they have prior knowledge of the Opponent’s request for consent on the extension of time to file the Notice of Opposition, but they had also agreed, on written terms to provide their consent. It seems that the Applicant’s disagreeability had only started upon receiving the Registrar’s letter on confirmation of their consent to this matter. Therefore, the Applicant’s claim that they are prejudiced would not be applicable as when their consent was conveyed in written form, they already had knowledge of the Opponent’s written request to the Registrar.
However, regardless of the decision, the Registrar reminded that the compliance to the Trademarks Rules should be an established practice by now, and the Opponent’s actions should not be condoned. In fact, should the Applicant have refused to consent upon knowledge that the written request for an extension of time to the Registrar was made minus Form TM 48, the results of the proceedings would have been entirely different. As such, this case must not be followed as a precedent for parties which fail to comply with the procedural requirements of the Trademarks Rules. It will still be a case-to-case basis and the Registrar must balance the facts to serve the best interest of the law.
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