Registrar allows cross-examination of witness in cancellation proceedings

Under Rule 33(3), read in conjunction with Rule 59(2), of the Trademarks Rules, the consequence of a failure to file evidence by the respondent in trademark invalidation proceedings is that the applicant's evidence is deemed to be admitted. In a recent case before the Intellectual Property Office of Singapore, PT Eigerindo Multi Produk Industri v Sports Connection Pte Ltd ([2014] SGIPOS 2), the registrar has allowed a deviation from the default rule, as the facts involved a bad-faith claim, and allowed an application for cross-examination of the applicant's witness.  

The facts of the case are as follows. PT Eigerindo Multi Produk Industri is the proprietor of the following registered mark in Classes 18 and 25 of the Nice Classication:

Sports Connection Pte Ltd, which owns the mark depicted below, filed an invalidation proceedings against PT Eigerindo's mark alleging, among other things, that the mark had been registered in bad faith.  

In the course of the proceedings, Sports Connection filed its evidence in support of the invalidation action. However, PT Eigerindo failed to file its evidence in reply by the stipulated deadline. Accordingly, the registrar issued a letter informing the parties that PT Eigerindo was deemed to have admitted the facts alleged by Sports Connection, in accordance with the Trademarks Rules. PT Eigerindo filed an application requesting the cross-examination of Sports Connection's deponent, calling upon the registrar's discretionary power to allow cross-examination in trademarks proceedings.

The registrar noted that a strict application of the procedural rules is necessary, as these rules allow matters to proceed without delay. At the same time, the ultimate objective of trademark proceedings is to ensure that a fair outcome is achieved using fair processes. The registrar observed that the facts alleged by Sports Connection could very readily give rise to further questions, especially in view of the fact that Sports Connection did not have any documentary evidence to prove the same. Furthermore, as the evidence included facts adduced to support an allegation of bad faith, cross-examination by PT Eigerindo was likely to assist the final adjudication of the substantive issues in the invalidation proceedings.

The registrar held that, in view of the serious nature of the bad-faith claim, the prejudice to PT Eigerindo justified the exercise of the registrar's discretion to allow the cross-examination of Sports Connection's deponent. Denying PT Eigerindo's request for cross-examination would deprive the registry of the opportunity to test the evidence on which the allegation of bad faith was based. In addition, the registrar would also benefit from the cross-examination of certain parts of the evidence, as this would ultimately enable the registrar to come to a measured and fair decision at the final substantive hearing of the invalidation proceedings.

It is noteworthy that, even though the registrar allowed the cross-examination of Sports Connection's witness in relation to certain parts of its evidence, it expressly cautioned that this decision should not be considered as a precedent for future cases and should be confined strictly to the facts and circumstances of the present case.

Angeline Lee, Baker & McKenzie. Wong & Leow LLC, Singapore