Good-faith mistake may not be sufficient for registrar to grant extension of time

In V Hotel Pte Ltd v Jelco Properties Ltd ([2014] SGIPOS 1), the registrar has rejected a request for restoration of a trademark application and extension of time to file evidence in opposition proceedings. The registrar held that a good-faith mistake, per se, may not be sufficient to enable the registrar to exercise discretion in favour of an extension of time. There must be some extenuating circumstances to explain the oversight or delay.

The facts of the case were as follows. The applicant, V Hotel Pte Ltd, filed an application for the device mark V HOTEL in Class 43 of the Nice Classification. The application was opposed by Jelco Properties Ltd. As part of the opposition proceedings, the applicant was required to file its evidence by October 2 2013. However, no evidence was received by the registrar by this deadline. Under the Trademark Rules, if the evidence is not filed by the applicant by the stipulated deadline, the application is deemed to have been withdrawn. Accordingly, on October 16 2013 the registrar issued a notification that the application was deemed withdrawn.

On October 21 2013 the applicant filed a request for an extension of time to file the evidence, as the parties were engaged in negotiations and the request had been filed out of time due to a docketing error. According to the applicant, the mistake was compounded by the fact that the lawyer in charge of the matter had been away on national reservist duty during the relevant period; although there were arrangements in place for coverage of duties, due to the docketing error the covering personnel was not aware of the deadline of October 2 2013. 

Under Rule 83 of the Trademarks Rules, the registrar is empowered to rectify any irregularity in procedure which, in his/her opinion, is not detrimental to the interests of any person or party, on such terms as the registrar may direct. 'Irregularities' refer to failures to comply with the procedural requirements under the Trademarks Act (Cap 332) and the Trademarks Rules. This includes matters in respect of time. Hence, the registrar has the power to restore an application that has previously been deemed withdrawn.

The registrar noted that the exercise of the discretionary power under Rule 83 is a balancing exercise, which must take into account the public interest in legal certainty and the need to ensure the proper adjudication of the case based on its merits.

The registrar observed that there is a legitimate expectation that an opposition be dealt with in accordance with the rules of procedure, unless good and sufficient reasons displace this expectation.

In the present case, there were no extenuating circumstances to mitigate the oversight. The fact that the responsible lawyer was away on reservist duty could not be regarded as an extenuating circumstance, as there were covering arrangements in place. The applicant's failure to request an extension of time or to file evidence prior to October 2 2013, as well as the registrar's notification that the application was deemed withdrawn on October 16 2013, would have led the respondent to believe that the application was deemed withdrawn. Thus, the respondent would be prejudiced if the application was restored. The prejudice caused to the applicant was a direct factual consequence of the applicant's default, and an applicant cannot rely on the consequences of its own default to support its application for an exercise of the registrar's discretion under Rule 83.

Taking into account all the facts in the case, the registrar held that the applicant had failed to show that there were exceptional circumstances or good reasons to justify the registrar's exercise of discretion pursuant to Rule 83. Therefore, the request for restoration of the application and for an extension of time to file evidence was refused.

Malobika Banerji, Baker & McKenzie Wong & Leow LLC, Singapore