This was certainly a “killer” case in Singapore (couldn’t resist the pun!). The unfortunate party here is KPR Singapore Pte Ltd, the Applicants of the mark “KPR & Device”. The filing of an extension of time to file a Counter Statement in an opposition proceeding in Singaporeafter the expiry of the 4-month deadline given by the Intellectual Property Office of Singapore (IPOS) proved fatal to KPR Singapore Pte Ltd (“the Applicants”).
In the opposition proceeding, PSE Asia-Pacific Pte Ltd (“the Opponents”) opposed the trademark application on 17 June 2010. On 17 August 2010, the Applicants applied for a 2-month extension of time to file their Counter Statement and an extension up to 17 October 2010 was granted by the Registrar. The letter informing the Applicants was sent out and the same letter was copied and sent to the Opponent.
The final deadline of 17 October 2010 came and passed, with no Counter Statement filed by the Applicants. Following this, the Registrar wrote to the Applicants informing them that their trademark application was considered withdrawn.
Upon receipt of this letter from the Registrar, the Applicants’ trademark agents contacted IPOS to inform the Office that it had not received the Registrar’s earlier letter informing them that the extension had been granted. The Applicants’ agents filed a letter of appeal and copies of the relevant excerpts of the agents’ log book records were furnished. The log book which supposedly recorded all incoming letters from IPOS did not include the letter granting the extension.
The Opponents, however, were not kept in the loop as they were not copied on this letter of appeal to the Registrar. In the meantime, the Registrar replied to the Applicants’ agents showing mailing records which proved that the specific letter was mailed out. Nonetheless, the Registrar exercised her discretion and allowed a one-week extension to the Applicants to file their Counter Statement. The Applicants were to file their Counter Statement by 11 November 2010.
The Opponents, upon discovering this extension of time, wrote to the Registrar on 8 November 2010 to voice their objections to this new extension. The Applicants filed their Counter Statement the following day. To resolve this matter, a hearing was called between both parties to determine whether an extension of time should have been given to the Applicants to file their Counter Statement outside the maximum 4-month deadline accorded by the trademark provisions.
At the hearing, the Applicants’ agents argued that, (i) they did not receive the Registrar’s initial letter granting them the extension of time; (ii) even though the Applicants’ agents were aware that the final deadline to file the Counter-Statement fell on 17 October 2010, it was their firm’s practice to only record the deadline in their system upon receipt of the Registrar’s letter stating the deadline; (iii) although in cases such as these, the public interest should be considered and the innocent party (the Opponents here) normally gets the benefit, this case is arguably different because the Opponents alleged fraud and bad faith on the part of the Applicants in the Notice of Opposition and it is vital for the allegations to be denied to avoid issues of estoppel and adverse inference should this matter be taken to the courts; and (iv) the opposition has already begun and the Counter Statement has since been filed – thus the opposition should be allowed to continue.
The Opponents, on the other hand, argued that, (i) the 4-month deadline to file the Counter Statement is absolute and the Registrar has no discretion to extend the deadline; (ii) even if she has the discretion, the Applicants have not given good reasons to support their request for an extension – according to the Opponents, the Applicants should have either contacted the Registrar, or filed the Counter Statement before the 4-month deadline if they did not hear from the Registrar; (iii) the Applicants’ concerns on estoppel and adverse inference are baseless as allegations of fraud are not dealt with substantively at IPOS; and (iv) prior IPOS decisions show that the Registrar was not adverse to rejecting Counter Statements.
Upon considering the written submissions and authorities both parties filed in support of their position, the Registrar decided in favour of the Opponent and rejected the final extension of time provided to the Applicants. The Registrar held that although it has discretion to grant extensions beyond the expiry period, this discretion should be used sparingly and only for cases where good reasons are shown. The deadline should have been monitored more carefully and taking steps only after the Applicants were informed that the application was deemed withdrawn was not a point in their favour. As to fraud and bad faith contentions, these are not determined at the Registrar level.
The Registrar held that the Applicant’s trademark application was deemed withdrawn and both parties were asked to bear their own costs in the matter. The Applicant was granted a refund for the filing fees they paid together with their Counter Statement as the Registrar viewed that they only incurred the cost once they received the approval for the additional discretionary one-week extension from the Registrar. Ironically, the Applicants were also told that they can easily file a new application for the same trademark if they were keen.
Although this decision by the Registrar must have been a tough one for the Applicants’ to digest, on the whole, the decision seems to be fair and just to the Opponents and the public. If anything, it is a lesson for all Applicants’ and agents to watch over their deadlines like a hawk.
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