Re Venice Simplon Orient Express

• Jurisdiction: Singapore
• Judge: G P Selvam J
• Judgment Date: 31 May 1994
• Neutral Citation: [1994] SGHC 154
• Docket Number: Originating Summons No 656 of 1993
• Date: 31 May 1994
• Year: 1994
• Published date: 19 September 2003
• Plaintiff Counsel: Jimmy Yim, M Haq and S Seah (Drew & Napier)
• Citation: [1994] SGHC 154
• Defendant Counsel: Mathew Joseph (Attorney General's Chambers),Sukumar Karuppiah and P Sivakumar (Ella Cheong & G Mirandah) (in attendance on court's invitation)
• Court: High Court (Singapore)
• Subject Matter: Certiorari,Administrative Law,Judicial review,s 24 Trade Marks Act (Cap 332, 1992 Ed),Whether registrar can grant extension of time to one party and not the other in cases of referral under s 24 of the Trade Marks Act,Manner and nature of power,How registrar should exercise power,Registrar's powers,Trade Marks and Trade Names,O 87 r 2(4) & (5) Rules of the Supreme Court 1990,Registration,Registrar refusing to grant extension of time to apply to court in referral under s 24 of Trade Marks Act,Application to quash decision of Registrar of Trade Marks and Patents,Administrative discretion,s 24 Trade Marks Act (Cap 332, 1992 Ed)- O 87 r 2(4) & (5) Rules of the Supreme Court 1990,When court should grant order,Power to grant extensions of time

This is an application by Venice Simplon Orient Express Inc (Venice Simplon USA) for an order of certiorari to remove into the High Court and to quash the refusal of the Registrar of Trade Marks and Patents (the registrar) to restore six applications: Nos 2374/91, 2382/91, 2383/91, 2384/91, 2385/91 and 2386/91. The application further seeks a direction for their restoration to their original date.

The subject matter of the application are the marks `Orient Express`, `VSOE Marquetry Logo`, and `Venice Simplon Orient Express`. The marks relate to services connected with travel, tourism and recreation. As the marks suggest, they are all the publicity devices of the well-known `Orient Express` train. The applicants` address is No 1 World Trade Center, New York, United States of America. Their solicitors are Drew and Napier. They filed the applications on 1 March 1991.

On the same date, 1 March 1991, Société Nationale Des Chemins De Fer Francais of Paris, France (Société Nationale), filed an application, Trade Mark Application No 1914/91, to register the mark `Orient Express`. Their solicitors are Ella Cheong & G Mirandah (Ella Cheong). This application was in respect of similar services - that is to say `hotels, restaurants, hotel reservation services, holiday houses, organization, chaperoning, and escorting services, printing services, beauty and body care.`

Venice Simplon`s applications Nos 2374/91, 2383/91 and 2385/91 were under Class 42 of the Trade Marks Act (Cap 332). The other three applications were under Class 39. Société Nationale`s application was in respect of Class 42.

Class 39 covered transportation and storage. It was later expanded to comprise transport, packaging and storage of goods, and travel arrangement.

Class 42 covered miscellaneous services. It has now been restated to comprise food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; and services that cannot be placed in other classes.

The filing of the applications on the same day has a significance. The day marked the advent of service marks in Singapore.

Section 24 of the Trade Marks Act (Cap 332, 1992 Ed) (the Act) provides that:

Where separate applications are made by different persons to be registered as proprietors of trade marks that are identical or nearly resemble each other in respect of the same description of services, the Registrar may refuse to register any of them until their rights have been determined by the Court or have been settled by agreement in a manner approved by him.

As the marks had identical contents, on 31 August 1992, that is 18 months after filing of the applications, the Registrar of Trade Marks sent a letter to Ella Cheong and Drew & Napier. It referred to the applications of both parties and stated further as follows:

In view of the identical marks or marks nearly resembling each other being applied for registration by both of you in respect of the same goods or description of goods, the registrar, pursuant to s 24 of the Trade Marks Act, refuses to register any of the abovementioned marks until your respective rights have been determined by the court, or have been settled by agreement in a manner approved by him or by the court.

Please let us know the outcome within three months of the date hereof. If we do not hear from you within the said period, the abovementioned application shall be deemed abandoned.

The date by which the outcome of the determination by the court or the settlement had to be notified to the registrar was 30 November 1992.

Neither party applied to the court for a ruling by the court. They did not negotiate for a settlement of the matter either. But, on 21 November 1992, Ella Cheong wrote to the registrar seeking an extension of time. This letter was not copied to Drew & Napier. The registrar gave an extension of two months by a letter dated 1 December 1992. There was something strange about this letter because the name of both Ella Cheong and Drew & Napier appeared in the letter but the latter`s name was deleted. In the event, Drew & Napier did not receive a copy of Ella Cheong`s letter.

On 21 January 1993, Ella Cheong wrote to the registrar stating that:

As our clients are having some difficulties in compiling the necessary evidence to overcome the registrar`s objections, we would be most grateful if the registrar could grant us a further extension of time to deal with the matter. Your early reply acceding to our request is most appreciated.

The registrar again acceded to the request. This time the registrar`s letter dated 3 February 1993, which was addressed to Ella Cheong only, was peremptory:

Your request for extension of time is granted. Please let us hear from you within one (1) two (2)* months from the date hereof. Please note that this extension is final and no further applications for extensions shall be granted.

This time the expiry date was 3 April 1993.

Drew & Napier in the meantime did nothing to advance their clients` interest. They said that the lawyer handling the matter left the firm in August 1992 and another solicitor took over the matter in September 1992 but `deadlines were cancelled by the clerical staff without his knowledge.` In an affidavit, this solicitor stated that, `on or about 4 March 1993, my attention was drawn to the missed deadlines.` He then ascertained from Ella Cheong that they had obtained from the registrar an extension of time to April 1993. At once, Drew & Napier wrote to the registrar as follows:

We refer to your letter of 31 August 1992 in respect of the above applications. We understand that the applicants of TMA No 1914/91 have been granted a final extension to April 1993 and shall be grateful if you can confirm that the extension of time applies to our clients.

We should also draw to the registrar`s attention that these applications were previously handled by our Ms Faizah Jamal who, as you may be aware, has since left our firm for further studies. Due to an oversight, the deadline in this matter was not diaried when the undersigned took over the matter. We therefore humbly seek the registrar`s indulgence in extending the time for our clients to respond to the deadline given to M/s Ella Cheong & G Mirandah.

Further, the issues in dispute in this matter are the same or similar as those raised in oppositions in relation to TM Nos 2382/91, 2383/91, 2384/91, 2385/91 and 2386/91. Therefore, may we propose that this matter be kept in abeyance until the above oppositions are heard.

We look forward to receiving the registrar`s response shortly.

After more than a month, the registrar responded on 14 April 1993 as follows:

Please be advised that the extension of time granted to the applicants of TMA No 1914/91 cannot apply to your clients in respect of the abovementioned applications. Your clients did not ask for the extension of time.

Since you have failed to request for the extension of time within the stipulated time frame, the abovementioned applications have been deemed withdrawn.

Then Drew & Napier on 19 April 1993 asked for a hearing with the registrar and the registrar granted an audience. Submissions were made. The registrar was informed verbally that Ella Cheong had no objection to the extension of time. The registrar declined the request. The registrar explained her position in an affidavit filed in these proceedings. It contained the following statements:

After hearing Mr Steven Seah, I informed him that he has not made out a case for the extension of time. He was told that this was not the first time that his firm had failed to request for an extension of time in a similar situation. They had been told in an earlier case in 1989 that, in such circumstances, they must apply for an extension of time if they cannot resolve the matter within the stipulated time limit.

Furthermore, the registry`s letter of 31 August 1992 gave the firm a period of three months to respond. They did not do so. They had a further period of three months from 30 November 1992 to apply for restoration of their applications and seek a further extension of time. They did not do so. On 8 November 1990, I had sent a letter to all the law firms informing them that with effect from 1 December 1990, applications for restoration of abandoned applications should be made within three months of the date at which the applications were deemed abandoned. Annexed hereto and marked `LWY-12` is a copy of my said letter.

Previously, an applicant could apply for restoration of his application at any time. Such ad hoc applications gave rise to a number of problems to the registry. There was a need for a cut-off period. The reason was to ensure that the registry could waive citations that have been withdrawn (whether actually withdrawn or deemed to be so). If there is no cut-off date, the examiner would always be in a quandary as to waiver of the citation.

I therefore informed Mr Steven Seah that his request of 4 March 1993 was clearly out of time. I was not satisfied that the circumstances justified an extension of time. His firm had three additional months to apply to restore their client`s applications and to apply for an extension of time. Yet they did not make use of the opportunity. Mr Steven Seah was not able to satisfy me as to why the legal assistant taking over the files did not query the applicable deadlines, since it is the known practice of the registry to stipulate deadlines in all their letters to applicants/trade mark agents.

I informed Mr Steven Seah that if no response was made by his clients within the time allowed, their applications would be deemed to have been withdrawn. There is no requirement that the applicant actually withdraws his application. Although it is open to the parties to arrive at a mutual agreement to the satisfaction of the...