Attorney General v Venice-Simplon Orient Express Inc. Ltd

• Jurisdiction: Singapore
• Judgment Date: 16 March 1995
• Date: 16 March 1995
• Docket Number: Civil Appeal No 109 of 1993
• Court: Court of Appeal (Singapore)

Attorney-General

Plaintiff

and

Venice-Simplon Orient Express Inc Ltd

Defendant

[1995] SGCA 28

M Karthigesu JA

,

L P Thean JA

and

Goh Joon Seng J

Civil Appeal No 109 of 1993

Court of Appeal

Administrative Law–Administrative powers–Manner of exercise–Ultra vires–Whether imposition of time limit by Registrar ultra vires–Whether proper procedure followed–Whether refusal to extend time reasonable–Section 24 Trade Marks Act (Cap 332, 1992 Rev Ed)–Rule 29 Trade Marks Rules 1991 (S 86/1991)–Order 87 rr 2 (4) and 2 (5) Rules of the Supreme Court (Cap 322, R 5, 1990 Ed)–Administrative Law–Remedies–Certiorari–Procedural Impropriety–Illegality–Irrationality–Whether Registrar acted improperly and irrationally in refusing respondent's application for extension of time–Section 24 Trade Marks Act (Cap 332, 1992 Rev Ed)–Rule 29 Trade Marks Rules 1991 (S 86/1991)–Trade Marks and Trade Names–Registration–Similar marks–Refusal to register either mark under s 24 Trade Marks Act–Effect of Refusal–Section 24 Trade Marks Act (Cap 332, 1992 Rev Ed)

Two companies, the respondent and The Société Nationale Des Chemins De Fer Francais (“Société Nationale”) filed applications to register the same service trade mark “Orient Express” on the same day through their respective solicitors and the trade marks were identical in nature or nearly resembled each other. Accordingly, the Registrar of Trade Marks (“the Registrar”) invoked s 24 of the Trade Marks Act (Cap 332, 1992 Rev Ed) (“the Act”) and refused to register either of them and wrote to both solicitors and stated that the Registrar would deem the application as abandoned if they did not hear from them within 3 months. The solicitors for Société Nationale subsequently applied for and obtained various extensions of time. The solicitors for the respondent failed to take any action until several months after the expiry of the deadline. They subsequently wrote to the Registrar explaining their failure for complying with the Registrar's earlier letter and sought confirmation that the time extension given to Société Nationale also applied to the respondent. The Registrar replied that the extension of time did not apply to the respondent as the respondent did not ask for an extension of time and that the application was therefore deemed withdrawn. The respondent applied for an order of certiorari against the Registrar's refusal to extend or restore the respondent's trade mark applications. The High Court acceded to the application and quashed the Registrar's decision in refusing to restore the respondent's application to the list of pending trade mark application, restored the application and directed the respondent to file an application in the High Court for determination by the High Court of the respective rights of both parties. The Registrar appealed.

Held, dismissing the appeal:

(1) The grounds for judicial review included illegality, irrationality and procedural impropriety: at [10].

(2) Illegality meant that the decision maker must understand correctly the law that regulated his decision making power and give effect to it. Whether he had or not was a justiciable question to be decided, in the event of dispute, by the court: at [10].

(3) Irrationality referred to a decision which was so outrageous in its defiance of logic or of accepted moral standards that no sensible person who had applied his mind to the question to be decided could have arrived at it. This was a matter to be decided by the court: at [10].

(4) Procedural impropriety included the failure to observe the basic rules of natural justice, failure to act with procedural fairness towards the person who will be affected by the decision and the failure by an administrative tribunal to observe procedural rules that were expressly laid down in the legislative instruction by which its jurisdiction was conferred, even where such failure did not involve any denial of natural justice: at [10].

(5) The imposition of a time limit by the Registrar on parties to revert under s 24 of the Act was not ultra vires the powers of the Registrar provided that the time limit imposed was reasonable in all the circumstances and was flexible: at [19].

(6) Where applicants were slow in the prosecution of their applications, the Registrar could utilise the procedure under s 22 of the Act and r 55 of the Trade Marks Rules 1991 (S 86/1991) (“the Rules”) after which the application shall be deemed to be abandoned: at [21].

(7) The Registrar had the power to extend time under s 78 of the Act (as reflected in r 98 of the Rules). The exercise of this power was discretionary: at [22].

(8) In the instant appeal, r 29 of the Rules did not apply. Accordingly, since the Registrar had followed r 29, she had adopted the wrong procedure and had acted with procedural impropriety when she refused the respondent's applications for extension of time. Accordingly, the appeal was dismissed: at [20].

Council of Civil Service Unions v Minister for the Civil Service [1985] AC 374 (folld)

Rules of the Supreme Court (Cap 322, R 5, 1990 Ed)O 87rr 2 (4), 2 (5) (consd)

Trade Marks Act (Cap 332,1992 Rev Ed)s 24 (consd);ss 22,78

Trade Marks Rules 1991 (S 86/1991)r 29 (consd);rr 55,98

Mathew Joseph and Regina Ow (Attorney General's Chambers) for the appellant

Jimmy Yim, Dedar Singh and Steven Seah (Drew & Napier) for the respondent.

Judgment reserved.

M Karthigesu JA

(delivering the grounds of judgment of the court):

1 On 18 October 1994 we dismissed the appellant's appeal against the judgment of G P Selvam J reported at Re Venice-Simplon Orient Express Inc Ltd [1994] 2 SLR (R) 664 for the reasons which appear hereafter. G P Selvam J had quashed the decision of the Registrar of Trade Marks' (“the Registrar”) refusal to restore six applications for the registration of trade marks relating to the Orient Express train made by the respondents Venice-Simplon Orient Express Inc (“Venice-Simplon”) on the grounds that the Registrar's refusal to restore was illegal, irrational and a procedural impropriety.

2 The full facts which are not in dispute have been set out in detail at 348- 354 of the report of the judgment. The basic facts were these: Venice-Simplon and the French national railway company, The Société Nationale Des Chemins De Fer Francais (“Société Nationale”) filed applications to register...