Perdigao v Barilla: Extension of Time for Appeal Service in Trademark Opposition

Perdigao Agroindustrial SA appealed to the High Court of Singapore against the decision of the Principal Assistant Registrar of Trade Marks regarding the opposition by Barilla GER Fratelli-Societa Per Azioni to Perdigao's trademark application. The court allowed Perdigao's appeal for an extension of time to serve the originating summons, finding that the delay, caused by a clerical oversight and office relocation, was excusable in light of the lack of prejudice to Barilla and the merits of the appeal. Costs were awarded to Barilla on an indemnity basis, to be borne by Perdigao's solicitors.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal Allowed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Perdigao's appeal for extension of time to serve appeal against trademark opposition was allowed, with costs to Barilla.

1.7 Decision Date

17 September 2009

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Perdigao Agroindustrial SA	Plaintiff, Appellant	Corporation	Appeal Allowed	Won	Colin Phan of Gateway Law Corporation
Barilla GER Fratelli-Societa Per Azioni	Defendant, Respondent	Corporation	Costs Awarded	Partial	Paul Teo of Drew & Napier LLC

3. Judges

Judge Name	Title	Delivered Judgment
Andrew Ang	Judge	Yes

4. Counsels

Counsel Name	Organization
Colin Phan	Gateway Law Corporation
Paul Teo	Drew & Napier LLC

4. Facts

Perdigao applied to register the mark “BORELLA” in Classes 29 and 30 on 16 September 2003.
Barilla opposed Perdigao’s marks on 23 June 2004 (Class 29) and 4 August 2004 (Class 30).
The Principal Assistant Registrar dismissed Barilla's opposition in Class 29 but allowed it in Class 30.
Perdigao filed an appeal against the decision regarding the Class 30 mark.
The notice of appeal was served 22 days out of time due to clerical oversight and office relocation.
Perdigao's solicitor informed Barilla's solicitors of the appeal on the day it was filed.
Barilla conceded that the appeal was not hopeless and that it suffered no prejudice.

5. Formal Citations

Perdigao Agroindustrial SA v Barilla GER Fratelli-Societa Per Azioni, OS 1497/2008, RA 62/2009, 63/2009, [2009] SGHC 210

6. Timeline

Date	Event
2003-09-16	Perdigao applied for registration of the mark “BORELLA” in Classes 29 and 30.
2004-06-23	Barilla opposed Perdigao’s mark in Class 29.
2004-08-04	Barilla opposed Perdigao’s mark in Class 30.
2008-07-22	The oppositions were heard at the Intellectual Property Office of Singapore.
2008-10-22	The Principal Assistant Registrar of Trade Marks issued her grounds of decision.
2008-10-28	Perdigao received the Principal Assistant Registrar's letter enclosing her grounds of decision.
2008-11-24	Perdigao filed Originating Summons No 1497 of 2008 appealing the decision of the Principal Assistant Registrar with respect to the Class 30 mark.
2008-11-24	Perdigao informed Barilla's solicitors that an appeal had been filed.
2008-12-23	The notice of appeal was served on Barilla’s solicitors.
2009-01-19	Perdigao filed an application for an extension of time.
2009-02-02	Initial hearing before the Assistant Registrar.
2009-02-03	Supplementary affidavit filed by Perdigao’s solicitor.
2009-02-04	Barilla’s solicitors objected to the supplementary affidavit.
2009-02-10	Further arguments heard by the Assistant Registrar.
2009-02-10	The Assistant Registrar recalled his earlier orders.
2009-09-18	Decision Date

7. Legal Issues

Extension of Time
- Outcome: The court granted the extension of time, finding the reasons for the delay sufficient and no prejudice to the defendant.
- Category: Procedural
- Sub-Issues:
  - Clerical oversight
  - Office relocation
- Related Cases:
  - [1996] 2 SLR 780
  - [1991] SLR 212
  - [1986] SLR 484
  - [2006] 2 SLR 565
  - [2008] 1 SLR 757
  - [1998] 3 SLR 105
  - [2005] 2 SLR 425
  - [2007] 3 SLR 537
  - (1884) 26 Ch D 700
  - [2002] 3 SLR 357
  - [2004] 2 SLR 505
  - [1999] 3 SLR 239
  - [1907] 1 KB 1
  - [1939] Ch 841
  - [1974] 1 MLJ 58
  - [1974] 1 MLJ 31
  - [1980-1981] SLR 381
  - [1992] 1 SLR 1
  - [2000] 4 SLR 46
  - [2001] 4 SLR 441
  - [2005] SGCA 3
  - [1985] 2 All ER 517
  - [1937] AC 473
  - [1999] 1 SLR 82
  - [2009] 2 SLR 166

8. Remedies Sought

Extension of time to serve Originating Summons

9. Cause of Actions

Appeal against decision of Principal Assistant Registrar of Trade Marks

10. Practice Areas

Commercial Litigation
Trademark Opposition

11. Industries

Food Industry

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Pestbusters Pte Ltd v Registrar of Companies	High Court	Yes	[1996] 2 SLR 780	Singapore	Cited for the principle that the time for appeal runs from the date the decision was given to the appealing party.
Pearson v Chen Chien Wen Edwin	Unknown	Yes	[1991] SLR 212	Singapore	Cited as authority that granting an extension of time is a matter of discretion and the application for such extension should be on grounds sufficient to persuade the court to show sympathy to the applicant.
Hau Khee Wee v Chua Kian Tong	Unknown	Yes	[1986] SLR 484	Singapore	Cited for the factors the court considers in deciding whether to exercise its discretion to grant an extension of time.
Lai Swee Lin Linda v Attorney-General	Unknown	Yes	[2006] 2 SLR 565	Singapore	Cited as authority that the factors in Hau Khee Wee are the definitive framework for the exercise of discretion to grant extension of time.
Lee Hsien Loong v Singapore Democratic Party	Unknown	Yes	[2008] 1 SLR 757	Singapore	Cited as authority that all four factors are of equal importance and must be taken into account when considering an extension of time.
The Tokai Maru	Unknown	Yes	[1998] 3 SLR 105	Singapore	Cited as authority that the courts adopt a more stringent approach towards applications for extension of time for the filing or serving of a notice of appeal than towards other applications for extension of time.
United Overseas Bank Ltd v Ng Huat Foundations Pte Ltd	Unknown	Yes	[2005] 2 SLR 425	Singapore	Cited for the principle that the quest for justice entails a continuous need to balance the procedural with the substantive.
Lee Chee Wei v Tan Hor Peow Victor	Unknown	Yes	[2007] 3 SLR 537	Singapore	Cited for the principle that each case involving procedural lapses or mishaps must be assessed in its proper factual matrix and calibrated by reference to the paramount rationale of dispensing even handed justice.
Cropper v Smith	Unknown	Yes	(1884) 26 Ch D 700	England	Cited for the principle that the object of Courts is to decide the rights of the parties, and not to punish them for mistakes they make in the conduct of their cases by deciding otherwise than in accordance with their rights.
Denko-HLB Sdn Bhd v Fagerdala Singapore Pte Ltd	Court of Appeal	Yes	[2002] 3 SLR 357	Singapore	Cited for the principle that the longer the delay, the better ought the reason therefor to be.
AD v AE	Court of Appeal	Yes	[2004] 2 SLR 505	Singapore	Cited for the principle that the courts adopt a more stringent approach towards applications for extension of time for the filing or serving of a notice of appeal than towards other applications for extension of time.
Stansfield Business International Pte Ltd v Vithya Sri Sumathis	High Court	Yes	[1999] 3 SLR 239	Singapore	Cited for the principle that where the failure to serve the notice in time was due to the fault of the solicitor or his clerk, this would not be sufficient to warrant the exercise of the court’s discretion even if there were merits in the appeal.
In Re Coles and Ravenshear	Unknown	Yes	[1907] 1 KB 1	England	Cited for the principle that a solicitor’s mistake does not constitute special circumstances warranting an extension of time.
Gatti v Shoosmith	English Court of Appeal	Yes	[1939] Ch 841	England	Cited for the principle that a mistake on the part of a legal adviser might be sufficient to warrant the court exercising its discretion favourably.
Chin Hua Sawmill Co Sdn Bhd v Tuan Yusoff bin Tuan Mohamed	Federal Court	Yes	[1974] 1 MLJ 58	Malaysia	Cited for the principle that a solicitor’s mistake resulting in a failure to serve notice was not a ground for granting special leave.
Cheah Teong Tat v Ho Gee Seng	High Court	Yes	[1974] 1 MLJ 31	Malaysia	Cited for the principle that merits alone was not sufficient by itself without special circumstances to warrant the grant of an extension of time to file appeal.
Tan Chai Heng v Yeo Seng Choon	Unknown	Yes	[1980-1981] SLR 381	Singapore	Cited for the principle that a mistake or oversight on the part of the applicant’s solicitor or on the part of the solicitor’s clerk is not a sufficient ground for granting an extension of time to file a notice of appeal or a memorandum or petition of appeal.
Vettath v Vettath	Court of Appeal	Yes	[1992] 1 SLR 1	Singapore	Cited as an example where the Court of Appeal held that the applicant had not shown grounds sufficient to persuade the court to show sympathy to him.
Nomura Regionalisation Venture Fund Ltd v Ethical Investments Ltd	Unknown	Yes	[2000] 4 SLR 46	Singapore	Cited for the principle that an error on the part of a solicitor does not absolutely bar any relief.
Aberdeen Asset Management Asia Ltd v Fraser & Neave Ltd	Unknown	Yes	[2001] 4 SLR 441	Singapore	Cited for the principle that unless one can say that there are no prospects of the applicant succeeding on the appeal, this is a factor which ought to be considered to be neutral rather than against him.
Wee Soon Kim Anthony v UBS AG	Court of Appeal	Yes	[2005] SGCA 3	Singapore	Cited for the principle that the prejudice referred to in the four factors is the prejudice to the would-be respondent if an extension of time were granted and not the prejudice to the would-be appellant if the extension were not granted.
Palata Investments Ltd v Burt & Sinfield Ltd	Unknown	Yes	[1985] 2 All ER 517	England	Cited as an example where the delay of three days in entering an appeal was due to the counsel overlooking the fact that the prescribed time period had been reduced from six weeks to four weeks.
Evans v Bartlam	Unknown	Yes	[1937] AC 473	England	Cited for the principle that in the exercise of discretion whether or not to grant the extension of time, the court is not fettered by the decision of the lower court.
Chang Ah Lek v Lim Ah Koon	Unknown	Yes	[1999] 1 SLR 82	Singapore	Cited for the principle that in the exercise of discretion whether or not to grant the extension of time, the court is not fettered by the decision of the lower court.
Westacre Investments Inc v The State-Owned Company Yugoimport SDPR (also known as Jugoimport-SDPR)	Unknown	Yes	[2009] 2 SLR 166	Singapore	Cited for the principle that the Court of Appeal will only interfere if it is satisfied that the judge below had applied the wrong principle, or that he had taken into account matters which he ought not to have done, or failed to take into account matters which he ought to have done, or that the decision is plainly wrong.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Rules of Court (Cap 322, R5, 2006 Rev Ed) O 87 r 4(3)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Extension of time
Clerical oversight
Office relocation
Prejudice
Trademark opposition
Rules of Court
Discretion
Balance of justice

15.2 Keywords

trademark
opposition
extension of time
clerical oversight
office relocation
Perdigao
Barilla
Singapore
appeal

17. Areas of Law

Area Name	Relevance Score
Extension of Time	80
Civil Practice	75
Intellectual Property Law	60
Appellate Practice	50
Jurisdiction	30

16. Subjects

Civil Procedure
Intellectual Property
Trademark Law