Australia: The Consequences Of Failure To Follow A Strict Evidentiary Process In Singapore

Chen & Partners (S) Pte Ltd v Soon Ailing [2023] SGIPOS 3 ("Ailing v Chen") concerned revocation of a design registered to Chen & Partners (S) Pte Ltd. Soon Ailing succeeded in obtaining revocation on the basis of failure to provide evidence in accordance with the Registered Designs Rules (RDR). Similar provisions apply and, in some cases, have been tested under the Trade Marks Rules and Patents Rules.

Takeaway

There is little leniency in the decision-making of the Registrars (or their representatives) of the Intellectual Property Office of Singapore, where a party has failed to follow the prescribed evidentiary process insofar as it relates to the parties and deadlines.

Designs

In Ailing v Chen, Chen & Partners (S) Pte Ltd ("Chen") registered design 30202008442T on 14 September 2020 in class and subclass 10-07 for a "Customized watch bezel" ("442T"). Earlier, on 4 November 2019, Chen registered design 30201907269R for a "Watch case" in the same class and subclass ("269R").

In the statement of grounds, Soon Ailing ("Ailing") submitted that 442T could not be regarded as novel in view of 269R. Ailing filed and served evidence on the Registrar and Chen by the relevant deadline. Chen denied all allegations in the statement of grounds, but filed no evidence in support of its position.

Under the RDR, Rule 43 of the Registered Designs Rules ("RDR") provides, under the heading "Evidence in support of registration", as follows:

"If the registered owner does not file or serve any evidence in accordance with paragraph (1) [namely, upon the applicant and Registrar by the relevant deadline], he shall, unless the Registrar otherwise directs, be deemed to have admitted to the facts alleged by the applicant in his application for revocation."

While a measure of discretion is built into that paragraph, the Principal Assistant Registrar Ong Sheng Li, Gabriel gave little weight to it.

As a result, the Registrar found Chen to have admitted to the accuracy of the facts alleged by Ailing. Moreover, Ailing was awarded costs.

Trade Marks

In Aramara Beauty LLC (dba Glow Recipe) v Sinchen Group Pte Ltd [2022] SGIPOS 18 ("Aramara v Sinchen"), Aramara Beauty LLC ("Aramara") sought revocation of the stylised mark "Glow Recipe" registered to Sinchen Group Pte Ltd ("Sinchen") in Classes 3, 5, and 32.

Sinchen filed evidence with the Registrar of Trade Marks ("Registrar") but failed to supply a copy of the evidence to Aramara. On two occasions the Registrar sought evidence of service of evidence upon Aramara, also stating that failure to reply would constitute an admission of the facts as alleged by Aramara. On both occasions Sinchen failed to reply.

Under R37(2) of the Trade Marks Rules:

"(2) The parties shall file with the Registrar their written submissions and bundles of authorities at least one month before the date of hearing, and shall at the same time exchange with one another their respective written submissions and bundles of authorities.
...

(4) Any party who does not file with the Registrar Form HC1 before the hearing may be treated as not desiring to be heard, and the Registrar may proceed with the hearing in the absence of that party or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit."

R31A(7) to (9):

"(7) When the applicant files the statutory declaration mentioned in paragraph (1)(b), the applicant must, at the same time, serve a copy of the statutory declaration on the opponent.

...

(9) If the applicant fails to comply with paragraph (4) or (7), the applicant is treated as having withdrawn the application for registration."

R59(2)(d) states:

"(d) the reference in rule 31A(9) to the withdrawal of the application shall be treated as a reference to the admission by the proprietor to the facts alleged by the applicant in his application for rectification, revocation or a declaration of invalidity of the registration;"

The Registrar found that when the above excerpts are read together, the result is an admission, by Sinchen, to the facts as alleged by Aramara on the basis of failure to serve evidence upon Aramara or, if Sinchen had done so, failure to provide evidence of service.

Again, the Registrar awarded costs in favour of Aramara.

Patents

Provisions in the Patents Rules achieve a similar result to that set out above, in relation to applicants for revocation made by an applicant in respect of a patent granted to a proprietor. In particular, R80 of the Patents Rules states:

"(4) In the case of an application for revocation of the patent specifying a ground mentioned in section 80(1), the application for the revocation of the patent must be granted if the proprietor of the patent fails to file the counter-statement in accordance with paragraph (3) [i.e. file upon the applicant and Registrar, by the prescribed deadline].

(4A) An order for the revocation of a patent made under paragraph (4) may be set aside by the Registrar, on the application of the proprietor of the patent, on any terms that the Registrar thinks fit.

(4B) An application under paragraph (4A) must be made within 14 days after the date of the Registrar's notification of the order for the revocation of the patent made under paragraph (4).

(5) The applicant may, within 3 months from the date of receipt of the copy of the amendment (if any) and the counter-statement, file evidence as he may desire to adduce in support of his case and shall at the same time send a copy of that evidence to the proprietor."

(6) If the applicant files no evidence in accordance with paragraph (5), he shall, unless the Registrar otherwise directs, be deemed to have abandoned his application."

It is therefore foreseeable that failure of one party to comply with the evidentiary process will be deemed an admission by that party of the position asserted by the other party.

Conclusion

Despite the ability to exercise discretion to allow proceedings to continue, the Intellectual Property Office of Singapore, and the Singapore courts, have focussed on expeditious and cost effective resolution of contentious proceedings and IP prosecution in general. It is therefore foreseeable that discretion will rarely be offered where contravention of the evidentiary process set out in the RDA, Trade Marks Rules or Patents Rules is clear.

Moreover, failure to submit evidence will result in an award of costs.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.