Axis Law Corp v Intellectual Property Office of Singapore

• Judge: Tay Yong Kwang J
• Judgment Date: 04 July 2016
• Neutral Citation: [2016] SGHC 127
• Citation: [2016] SGHC 127
• Docket Number: Originating Summons No 960 of 2015
• Published date: 13 July 2016
• Hearing Date: 16 May 2016
• Plaintiff Counsel: Daniel Ho (Summit Law Corporation)
• Date: 04 July 2016
• Defendant Counsel: David Chong, SC, Adrian Loo, Elaine Liew, and Ho Jiayun (Attorney-General's Chambers),Sandeep Menon (Dentons Rodyk & Davidson) (on watching brief)
• Court: High Court (Singapore)
• Subject Matter: Civil Procedure,Administrative discretion,Mandamus,Administrative law,Appeals,Judicial review,Remedies,Ambit,Certiorari,Leave,Manner of exercise,Administrative powers

Tay Yong Kwang J: Introduction

This originating summons (“OS”) is an application by Axis Law Corporation (“the Plaintiff”) for leave to commence judicial review proceedings against the Intellectual Property Office of Singapore (“IPOS”) (“the Defendant”).

The Plaintiff has a trademark dispute with Axis Intellectual Capital Pte Ltd (“the Registered Proprietor”). In the proceedings before the Principal Assistant Registrar of Trademarks (“the Registrar”) of IPOS, the Plaintiff sought to amend its Statement of Grounds (“SOG”) which was submitted as part of its application to invalidate and revoke the trade mark “AXIS” (Trademark No. T0106593C) registered and held by the Registered Proprietor. The application to amend was refused by the Registrar. As a result, the Plaintiff sought leave to apply for the following orders (with “Applicant” referring to the Plaintiff): A quashing order against the decision of the Registrar on 28 July 2015 in Case No. C010T0106593C, by which the said Registrar refused to allow the Applicant to amend its SOG to add alternative and/or additional grounds in relation to its application for invalidation and revocation of the trade mark “AXIS”, registered as Trademark No. T0106593C; and A mandatory order directing the Registrar to allow the Applicant to amend its SOG in the manner shown in “Annexure A”, which was annexed to Statement filed in support of OS 960/2015. [Annexure A is not reproduced here]

The OS was opposed by the Defendant, which was represented by the Attorney-General’s Chambers. Dentons Rodyk & Davidson held a watching brief for the Registered Proprietor.

The factual background The Trade Mark Proceedings

On 21 March 2014, the Plaintiff filed an application under s 23 of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) to invalidate the “AXIS” trade mark, which was registered and held by the Registered Proprietor. On 17 July 2014, the Registered Proprietor filed its counter statement. By this time, pleadings were deemed to be closed. The Plaintiff filed its evidence in support of the invalidation action on 14 November 2014. The Registered Proprietor filed its evidence on 14 January 2015.

On 7 May 2015, the Plaintiff sought leave to amend its SOG to do the following: To elaborate on the existing grounds under s 23 read with s 7(5) of the TMA; To add a new ground for the invalidation of the trade mark under s 23 read with s 7(1)(c) of the TMA; and To add a new ground for the revocation of the trade mark under s 22 of the TMA.

As the amendments were sought after pleadings were deemed to be closed, the Registrar directed the Plaintiff on 11 May 2015 to seek the consent of the Registered Proprietor. The Registrar’s practice in this regard is set out in HMG Circular 2/2010 dated 20 August 2010 (“the Circular”).

However, the Registered Proprietor refused to consent to the Plaintiff’s proposed amendments. On 29 May 2015, the Registrar directed the parties to file their written submissions on the proposed amendments by 12 June 2015.

On 5 June 2015, after the Plaintiff had filed its Evidence in Reply on 21 May 2015 and one week before parties were due to file their written submissions, the Plaintiff filed a revised version of the proposed amendments to its SOG. In this set of proposed amendments, the Plaintiff sought to include an additional ground for invalidation under s 23 read with s 7(6) of the TMA. The parties duly filed their written submissions on the issue of the amendments on 12 June 2015.

After considering the parties’ written submissions, the Registrar dismissed the Plaintiff’s application for leave to amend the SOG, issuing her Grounds of Decision on 28 July 2015.

On 19 October 2015, the Plaintiff filed the present application for judicial review, seeking the orders as stated above at [1].

The proper party to the application for judicial review

The Plaintiff had initially brought this OS for judicial review against the Attorney-General (“AG”) instead of IPOS.

At the first pre-trial conference (“PTC”) on 4 November 2015, before the learned Assistant Registrar Karen Tan (“AR Tan”), the AG expressed his objection to being named as a party to the judicial review proceedings. Instead, the AG argued that the proper party to be sued was IPOS because the relief the Plaintiff sought could only be performed by IPOS. IPOS is also a statutory board and a separate legal entity from the Government.

On 11 November 2015, the AG wrote to counsel for the Plaintiff to explain its position and to invite the Plaintiff to amend the originating summons accordingly. However, the Plaintiff did not respond to the AG and did not make any amendments to the originating summons.

At the second PTC before AR Tan on 26 November 2015, counsel for the Plaintiff maintained that the AG was the appropriate party to the judicial review proceedings. The Plaintiff explained that it had named the AG as the party pursuant to s 19(3) of the Government Proceedings Act (Cap 121, 1985 Rev Ed) (“GPA”), which states as follows:

Civil proceedings against the Government shall be instituted against the appropriate authorised Government department, or, if none of the authorised Government departments is appropriate or the person instituting the proceedings has any reasonable doubt whether any and if so which of those departments is appropriate, against the Attorney-General.

In particular, the Plaintiff relied on the second limb of s 19(3) of the GPA which states that proceedings should be commenced against the AG if none of the authorised Government departments is appropriate or if there is any reasonable doubt as to the appropriate Government department against which proceedings should be instituted. Further, the Plaintiff argued that because the application was made ex parte, O 53 r 1(3) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) (“ROC”) required the Plaintiff to serve the cause papers (ie, the originating summons, the statement and the supporting affidavit) on the AG. The Plaintiff therefore took the view that the AG should be the party to the present application for leave to commence judicial review proceedings.

As the Plaintiff maintained its position before AR Tan that the AG should be named as the party to the present proceedings, the AG informed AR Tan that it would raise this issue at the hearing of the application for leave.

The parties subsequently appeared before me at a PTC on 2 March 2016. The AG submitted that the present application for leave should be dismissed on the basis that it was taken out against the wrong party. It maintained its position that s 19(3) of the GPA did not apply in the present case because IPOS is not a Government department within the meaning of s 19(3) of the said Act. Instead, IPOS is a body corporate established under the Intellectual Property Office of Singapore Act (Cap 140, 2002 Rev Ed) (“IPOS Act”) and is capable of suing and being sued in its own name (see s 3(a) of the IPOS Act). As a statutory board, IPOS is legally separate from the Government in identity and representation.

It was further argued that the requirement to serve applications for leave on the AG under O 53 r 1(3) of the ROC does not make the AG a party to all judicial review proceedings. Making reference to Singapore Civil Procedure 2016 vol 1 (Foo Chee Hock JC gen ed) (Sweet & Maxwell, 2016) at para 53/1/10 and the High Court decision of Chan Hiang Leng Colin and others v Ministry for Information and the Arts [1995] 2 SLR(R) 627 at [4] and [5], the AG explained that the purpose of service on the AG was to bring the judicial review proceedings to the notice of the AG to allow him to ascertain if its participation in the proceedings is warranted in order to secure the Government and the public’s interests. The cases of Chai Chwan v Singapore Medical Council [2009] SGHC 115 (“Chai Chwan”), Lim Mey Lee Susan v Singapore Medical Council [2011] 4 SLR 156, and Lim Mey Lee Susan v Singapore Medical Council [2012] 1 SLR 701 were also cited in support of the AG’s position. Notably, in Chai Chwan, the High Court dispensed with the attendance of the AG at the hearing on leave (even though the AG was served with the leave application) because “the subject matter of the application did not concern the Government”. As such, the AG was of the view that O 53 r 1(3) of the ROC did not make the AG a party to the judicial review proceedings. Nonetheless, the AG stated that his office would be acting as counsel for IPOS should the judicial review proceedings continue as against IPOS.

The Plaintiff, on the other hand, argued that because the application before the court was ex parte, no one needed to appear on the originating summons as a party and that it was for the court to determine who the proper party to the application should be. The Plaintiff added that instead of seeking to dismiss this OS, the AG could and should have made the application for IPOS to be substituted as defendant to the proceedings pursuant to s 19(4) of the GPA. In any case, the joining of the AG was a non-issue because any perceived misjoinder would not be fatal to the proceedings. Section 19(5) of the GPA provides that upon a change of parties, the proceedings shall continue unaffected.

After hearing the parties, I agreed with the AG that IPOS was the proper defendant to the proceedings. IPOS is a statutory board that is capable of suing and being sued in its own name (see s 3(a) of the IPOS Act). It is the proper party to be sued in the present judicial review proceedings. As counsel for the Plaintiff indicated that he needed to take further instructions from the Plaintiff as to whether to proceed with the application for judicial review, I adjourned the matter for a further PTC on 14 March 2016. Nonetheless, I informed the parties that if the Plaintiff chose to proceed with the application for judicial review, it was to amend the OS to substitute...