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Non-compliance to RHC in Trademark Appeal Cases may result in deadly consequence

Non-compliance to RHC in Trademark Appeal Cases may result in deadly consequence

In a recent Trademark Invalidation appeal case decided by the High Court in early 2018, it was held that non-compliance to RHC may result in deadly consequence.

The brief background of the case is that the Appellant, GEOK ENG COMPANY LIMITED, commenced the appeal to court via a Notice of Motion dated 17 August 2016 to appeal against the decisions of the Trademarks Registry of 20 July 2016.

The Respondent, HOE HIN PAK FAH YEOW MANUFACTORY, LIMITED took out a summons to strike out the Notice of Motion on the grounds that it failed to state any grounds of the appeal pursuant to the Rules of the High Court (“RHC”) or alternatively, the Notice of Motion constitutes an abuse of process.

Instead of making an application for amendments to the Notice of Motion to include the grounds of its appeal, the Appellant, in the absence of the leave of the court, filed a document entitled “Grounds of Appeal” containing five grounds dated 23 November 2016 (“the Document”).

The trial judge accepted the Respondent’s arguments that the Document cannot form part of the Notice of Motion and that the Appellant could not show any legal basis for such incorporations or integration, and the judge went on to consider the unfairness and undesirability if a party is allowed to avoid an application under RHC to amend its Notice of Motion simply by filing a separate document without leave. The judge concluded the matter by ordering striking out the Notice of Motion (“the Striking-Out Decision”).

On 20 June 2017, instead of appealing against the Striking-Out Decision, the Appellant took out another summons to apply for leave of the court to extend the time to serve its Notice of Motion to appeal against the Decisions of the Trademarks Registry of 20 July 2016, approximately 11 months subsequent to the date of the mentioned decisions.

The Respondent, opposed the application on the grounds that there was a substantial and inexcusable delay and that the intended appeal lacks a real prospect of success.

The Appellant has tried explaining that the delay was caused by their previous legal advisers.

The trial judge, subsequent to considering all relevant factors, dismissed the Summons by holding that the delay was substantial and inexcusable and that the Appellant has failed to show a real prospect of success on merits.

Tips to follow RHC

The above cases have evidenced the court’s attitude towards strict compliance to RHC. It is therefore recommended to pay special attention to compliance to RHC and take great pains to ensure that RHC should be adhered to whenever possible and applicable, so as to avoid unnecessary complication in procedures or fatal consequences to legal actions.

Benny Kong & Tsai © 2023

Benny Kong & Tsai, Solicitors

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