Singapore: Delay Spells Death for Trademark
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Tilaknagar Industries Ltd. ("Applicants") had applied for three trademark applications for the stylized version of the mark "Savoy Club" ("Applicants' marks") while Distileerderij En Likburstokerij Herman Jansen B.V. ("Respondents") filed a trade mark application for the word mark "Savoy Club" ("the Intervening Application"). Notices of Opposition against the Applicants' marks were filed in July 2011.
In Singapore, parties in an opposition proceeding need to submit evidence through statutory declarations. The Respondents filed their statutory declaration on 1 October 2012. However, the Applicants failed to file their statutory declaration in time and as a result, their applications were deemed withdrawn. After 2 months, the Applicants filed an extension of time which was opposed by the Respondents.
The S.E.A Aquarium is one of the main attractions at Resorts World Sentosa, Singapore. It is the world's largest aquarium containing 45 million liters of water and housing more than 100,000 marine animals of over 800 species.
Considering the larger public interest in adherence to rules of procedure, sanctity of the Registrar's notification, long delay and lack of sufficient reasons; the Registrar concluded that an extension of time should not be allowed. The Applicants argued that they had overlooked the deadline and that not allowing an extension of time would be prejudicial as the burden of proof would fall on them in having to contest the Intervening Application. They further argued that the Respondents would not suffer prejudice if the extension was granted because they were aware of the existence of the Applicant's marks.
The Respondents argued that delay of more than two months was too long and should be disallowed and that solicitors' oversight is a "poor reason" for granting extensions. They further argued that they would suffer prejudice if an extension was granted as they would lose priority of the Intervening Application.
Delivering her judgment on 30 July 2013, the Registrar opined that a mistake may not be sufficient to enable the Registrar to grant an extension. The Applicants had not explained why filing the statutory declaration was important to their case. The onus on the Applicants to show that they had a reasonable defense had not been discharged. Therefore it could not be concluded that the Applicants would be prejudiced by a denial of the extension. Further, the Registrar highlighted the fact that the Respondents did not file for an extension immediately upon receiving the notice of the deemed withdrawal. This would have led the Respondents to believe that the mark was indeed withdrawn. Granting an extension of time at this stage could only be allowed for sufficient reasons. Considering the larger public interest in adherence to rules of procedure, sanctity of the Registrar's notification, long delay and lack of sufficient reasons; the Registrar concluded that an extension of time should not be allowed.
This case underscores the importance of monitoring the deadlines and submitting evidence on time. Failure to timely submit evidence may result in catastrophic consequences and spell the death of an otherwise meritorious case.
ABOUT THE AUTHOR: Patrick Mirandah Co.
Patrick Mirandah Co. is an established intellectual property (IP) firm with more than 25 years of experience in providing one-stop shop services for the IP needs of businesses in Southeast Asia and other Asian countries. Based in Singapore, its services cover important areas of Intellectual Property law such as patent, trademark, copyright infringement, trade secrets, industrial design, e-commerce, licensing and franchising, among others. It also offers its services in management and consultancy as well as litigation and dispute resolution.
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More information about Patrick Mirandah Co.
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
The S.E.A Aquarium is one of the main attractions at Resorts World Sentosa, Singapore. It is the world's largest aquarium containing 45 million liters of water and housing more than 100,000 marine animals of over 800 species.
Considering the larger public interest in adherence to rules of procedure, sanctity of the Registrar's notification, long delay and lack of sufficient reasons; the Registrar concluded that an extension of time should not be allowed. The Applicants argued that they had overlooked the deadline and that not allowing an extension of time would be prejudicial as the burden of proof would fall on them in having to contest the Intervening Application. They further argued that the Respondents would not suffer prejudice if the extension was granted because they were aware of the existence of the Applicant's marks.
The Respondents argued that delay of more than two months was too long and should be disallowed and that solicitors' oversight is a "poor reason" for granting extensions. They further argued that they would suffer prejudice if an extension was granted as they would lose priority of the Intervening Application.
Delivering her judgment on 30 July 2013, the Registrar opined that a mistake may not be sufficient to enable the Registrar to grant an extension. The Applicants had not explained why filing the statutory declaration was important to their case. The onus on the Applicants to show that they had a reasonable defense had not been discharged. Therefore it could not be concluded that the Applicants would be prejudiced by a denial of the extension. Further, the Registrar highlighted the fact that the Respondents did not file for an extension immediately upon receiving the notice of the deemed withdrawal. This would have led the Respondents to believe that the mark was indeed withdrawn. Granting an extension of time at this stage could only be allowed for sufficient reasons. Considering the larger public interest in adherence to rules of procedure, sanctity of the Registrar's notification, long delay and lack of sufficient reasons; the Registrar concluded that an extension of time should not be allowed.
This case underscores the importance of monitoring the deadlines and submitting evidence on time. Failure to timely submit evidence may result in catastrophic consequences and spell the death of an otherwise meritorious case.
ABOUT THE AUTHOR: Patrick Mirandah Co.
Patrick Mirandah Co. is an established intellectual property (IP) firm with more than 25 years of experience in providing one-stop shop services for the IP needs of businesses in Southeast Asia and other Asian countries. Based in Singapore, its services cover important areas of Intellectual Property law such as patent, trademark, copyright infringement, trade secrets, industrial design, e-commerce, licensing and franchising, among others. It also offers its services in management and consultancy as well as litigation and dispute resolution.
Copyright Patrick Mirandah Co. - Google+
More information about Patrick Mirandah Co.
View all articles published by Patrick Mirandah Co.
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
