Axis Law Corp v Intellectual Property Office: Judicial Review & Amendment of Trademark Statement

Axis Law Corp applied for judicial review against the Intellectual Property Office of Singapore (IPOS), challenging the Registrar's decision to disallow amendments to its Statement of Grounds in a trademark dispute with Axis Intellectual Capital Pte Ltd. The High Court, presided over by Justice Tay Yong Kwang, dismissed the application, finding no basis for judicial review on grounds of illegality or irrationality. The court held that IPOS is the proper defendant and that the Registrar acted within her discretion.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Application dismissed.

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Axis Law Corp seeks judicial review of IPOS's refusal to allow amendment of its trademark statement. The court dismissed the application, finding no illegality or irrationality.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Axis Law CorpPlaintiff, ApplicantCorporationApplication dismissedLost
Intellectual Property Office of SingaporeDefendant, RespondentStatutory BoardJudgment for DefendantWon
Ho Jiayun of Attorney-General’s Chambers
Adrian Loo of Attorney-General’s Chambers
Elaine Liew of Attorney-General’s Chambers
David Chong of Attorney-General’s Chambers
Axis Intellectual Capital Pte LtdOtherCorporation

3. Judges

Judge NameTitleDelivered Judgment
Tay Yong KwangJudgeYes

4. Counsels

Counsel NameOrganization
Daniel HoSummit Law Corporation
Ho JiayunAttorney-General’s Chambers
Adrian LooAttorney-General’s Chambers
Elaine LiewAttorney-General’s Chambers
David ChongAttorney-General’s Chambers
Sandeep MenonDentons Rodyk & Davidson

4. Facts

  1. Axis Law Corp filed an application to invalidate the “AXIS” trade mark held by Axis Intellectual Capital Pte Ltd.
  2. The Registrar refused Axis Law Corp's application to amend its Statement of Grounds after pleadings were closed.
  3. The Registrar considered factors outlined in HMG Circular 2/2010 in deciding whether to grant leave for amendments.
  4. The Registrar found that Axis Law Corp could have claimed the grounds earlier and that the Registered Proprietor would be prejudiced.
  5. Axis Law Corp sought judicial review of the Registrar's decision, alleging illegality and irrationality.
  6. The High Court dismissed the application for judicial review, finding no illegality or irrationality in the Registrar's decision.

5. Formal Citations

  1. Axis Law Corp v Intellectual Property Office of Singapore, Originating Summons No 960 of 2015, [2016] SGHC 127

6. Timeline

DateEvent
Plaintiff filed an application to invalidate the “AXIS” trade mark.
Registered Proprietor filed its counter statement.
Plaintiff filed its evidence in support of the invalidation action.
Registered Proprietor filed its evidence.
Plaintiff sought leave to amend its Statement of Grounds.
Registrar directed the Plaintiff to seek the consent of the Registered Proprietor.
Plaintiff filed its Evidence in Reply.
Registrar directed the parties to file their written submissions on the proposed amendments.
Plaintiff filed a revised version of the proposed amendments to its Statement of Grounds.
Parties filed their written submissions on the issue of the amendments.
Registrar dismissed the Plaintiff’s application for leave to amend the Statement of Grounds.
Plaintiff filed the application for judicial review.
First pre-trial conference.
AG wrote to counsel for the Plaintiff to explain its position and to invite the Plaintiff to amend the originating summons accordingly.
Second pre-trial conference.
Pre-trial conference before the Judge.
Pre-trial conference. The judicial review proceedings were stayed.
Plaintiff informed the court that its negotiations with the Registered Proprietor were unsuccessful.
Pre-trial conference. The parties agreed that both the application for leave as well as the merits of the judicial review could be dealt with at the hearing of the OS.
Hearing of the OS. The court dismissed the Plaintiff’s application for leave as well as on the merits.
Plaintiff filed an application for a declaration that leave to appeal to the Court of Appeal is not required.
Plaintiff requested the Registry of the Supreme Court to bring the hearing date forward.
Defendant invited the Plaintiff to withdraw SUM 2527 of 2016.
Plaintiff stated that it did not agree that SUM 2527 of 2016 was unnecessary.
Plaintiff filed a notice of appeal against the Judge's decision in the OS.
Plaintiff filed another affidavit by Ms Alina Sim.
SUM 2527 of 2016 came before the court for hearing.
Ms Alina Sim argued on behalf of the Plaintiff.
Judgment Date

7. Legal Issues

  1. Amendment of Statement of Grounds
    • Outcome: The court held that the Registrar did not err in refusing the amendments.
    • Category: Procedural
    • Sub-Issues:
      • Refusal to allow amendments
      • Consideration of relevant factors
      • Prejudice to parties
  2. Judicial Review
    • Outcome: The court found no grounds for judicial review.
    • Category: Procedural
    • Sub-Issues:
      • Illegality
      • Irrationality
      • Fettering of discretion
      • Bad faith

8. Remedies Sought

  1. Quashing order against the Registrar’s decision
  2. Mandatory order directing the Registrar to allow the amendment

9. Cause of Actions

  • Judicial Review

10. Practice Areas

  • Administrative Law
  • Intellectual Property Litigation
  • Trademark Litigation

11. Industries

  • No industries specified

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Chan Hiang Leng Colin and others v Ministry for Information and the ArtsHigh CourtYes[1995] 2 SLR(R) 627SingaporeCited regarding the purpose of serving the Attorney-General in judicial review proceedings.
Chai Chwan v Singapore Medical CouncilHigh CourtYes[2009] SGHC 115SingaporeCited regarding the purpose of serving the Attorney-General in judicial review proceedings.
Lim Mey Lee Susan v Singapore Medical CouncilUnknownYes[2011] 4 SLR 156SingaporeCited regarding the purpose of serving the Attorney-General in judicial review proceedings.
Lim Mey Lee Susan v Singapore Medical CouncilUnknownYes[2012] 1 SLR 701SingaporeCited regarding the purpose of serving the Attorney-General in judicial review proceedings.
Axis Law Corporation v Axis Intellectual Capital Pte LtdIntellectual Property Office of SingaporeYes[2015] SGIPOS 15SingaporeThe Registrar’s decision that is the subject of the judicial review.
Apptitude Pte Ltd v MGG Software Pte LtdIntellectual Property Office of SingaporeYes[2015] SGIPOS 8SingaporeCited for the distinction between court proceedings and proceedings before the Registrar of Trade Marks.
Asian Aisle Pte Ltd v Ricegrowers Co-operative LimitedIntellectual Property Office of SingaporeYes[2002] SGIPOS 7SingaporeCited for the principle that the Registrar's discretion to grant leave for amendment does not justify its exercise in every case.
AEA International Holdings Pte Ltd and Another v SOS International A/SIntellectual Property Office of SingaporeYes[2011] SGIPOS 10SingaporeCited for the principle that the Registrar's discretion to grant leave for amendment does not justify its exercise in every case.
Chwee Kin Keong and others v Digilandmall.com Pte LtdCourt of AppealYes[2005] 1 SLR(R) 502SingaporeCited for the principle of allowing amendments that enable the real issues between the parties to be tried, but distinguished in the context of trade mark proceedings.
J.-.E Borie SA v MHCSIntellectual Property Office of SingaporeYes[2013] SGIPOS 4SingaporeCited for the principle that s 25 of the TMA and r 83 of the TMR are general provisions that assist in assessing whether amendments are fair and reasonable.
Attorney-General v Venice-Simplon Orient Express Inc LtdCourt of AppealYes[1995] 1 SLR(R) 533SingaporeCited for the principle that the registrar's discretion was improperly exercised and that her decision was in that sense irrational.
Borissik Svetlana v Urban Redevelopment AuthorityHigh CourtYes[2009] 4 SLR(R) 92SingaporeCited for the principle that the High Court cannot direct the Registrar to exercise her discretion in a particular fashion.
R v Justices of KingstonUnknownYes86 LTR 589UnknownCited for the principle that the court does not by mandamus direct any public body how to perform their duty.
Re San Development Co’s ApplicationUnknownYes[1971-1973] SLR(R) 203SingaporeCited for the principle that the court does not by mandamus direct any public body how to perform their duty.
Public Service Commission v Lai Swee Lin LindaUnknownYes[2001] 1 SLR(R) 133SingaporeCited for the principle that the court has to consider whether the material before it discloses an arguable and prima facie case of reasonable suspicion.
Vellama d/o Marie Muthu v Attorney-GeneralUnknownYes[2012] 2 SLR 1033SingaporeCited for the principle that the threshold for establishing an arguable and prima facie case of reasonable suspicion is very low.
Ng Eng Ghee and others v Mamata Kapildev Dave and others (Horizon Partners Pte Ltd, intervener) and another appealUnknownYes[2009] 3 SLR(R) 109SingaporeCited for the definition of errors of law.
Doherty v Birmingham City Council (Secretary of State for Communities and Local Government intervening)UnknownYes[2009] 1 AC 367UnknownCited for the principle that errors of fact are generally not reviewable.
Cannock Chase District Council v KellyUnknownYes[1978] 1 WLR 1UnknownCited for the principle that the court should not consider the Plaintiff’s belated assertion that the Registrar had acted in bad faith.
Muhammad Ridzuan bin Mohd Ali v Attorney-GeneralUnknownYes[2014] 4 SLR 773SingaporeCited for the definition of bad faith.
Teng Fuh Holdings Pte Ltd v Collector of Land RevenueUnknownYes[2006] 3 SLR(R) 507SingaporeCited for the definition of bad faith.
Regina (Sainsbury’s Supermarkets Ltd) v Wolverhampton City CouncilUnknownYes[2011] 1 AC 437UnknownCited for the principle that the court could only interfere if the decision-maker had acted unreasonably in attaching the weight that it did.
Chee Siok Chin and others v Minister for Home Affairs and anotherUnknownYes[2006] 1 SLR(R) 582SingaporeCited for the definition of irrationality.
Aldridge, Appellant v Mayor, Aldermen, and Councillors of the Metropolitan Borough of Islington, DefendantsUnknownYes[1909] 2 KB 127UnknownCited for the principle that unduly harsh results could imply that the decision was irrational.
Muhammad Ridzuan bin Mohd Ali v Attorney-GeneralCourt of AppealYes[2015] 5 SLR 1222SingaporeCited for the definition of bad faith.
Lines International Holding (S) Pte Ltd v Singapore Tourist Promotion Board and anotherUnknownYes[1997] 1 SLR(R) 52SingaporeCited for the principle that a public body fetters its discretion if it adheres too strictly to a policy or takes orders from another person or body.
OpenNet Pte Ltd v Info-communications Development Authority of SingaporeCourt of AppealYes[2013] 2 SLR 880SingaporeCited regarding whether leave to appeal was required.
The Chem Orchid and other appeals and another matterCourt of AppealYes[2016] 2 SLR 50SingaporeCited regarding the proper approach for seeking a declaration from the High Court that leave to appeal was not required.
The “Xin Chang Shu”High CourtYes[2016] SGHC 93SingaporeCited for the principle that an application for a declaration that leave to appeal was not required should only be made if there is genuine uncertainty.
Salter Rex & Co. v GhoshEnglish Court of AppealYes[1971] 2 QB 597EnglandCited regarding the test of whether an order was interlocutory or final.

13. Applicable Rules

Rule Name
Rules of Court (Cap 322, R 5, 2014 Rev Ed)
O 53 r 1(3) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed)
O 1 r 9(2) of the Rules of Court
Trade Mark Rules (Cap 332, R 1, 2008 Rev Ed)
Rule 83 of the Trade Mark Rules (Cap 332, R 1, 2008 Rev Ed)

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
s 23 of the Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
s 7(5) of the Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
s 7(1)(c) of the Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
s 22 of the Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
s 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
s 25(b) of the Trade Marks ActSingapore
Government Proceedings Act (Cap 121, 1985 Rev Ed)Singapore
s 19(3) of the Government Proceedings Act (Cap 121, 1985 Rev Ed)Singapore
Intellectual Property Office of Singapore Act (Cap 140, 2002 Rev Ed)Singapore
s 3(a) of the Intellectual Property Office of Singapore Act (Cap 140, 2002 Rev Ed)Singapore
Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Judicial review
  • Statement of Grounds
  • Trademark
  • Amendment
  • Illegality
  • Irrationality
  • Fettering of discretion
  • Bad faith
  • Registrar of Trademarks
  • Intellectual Property Office of Singapore

15.2 Keywords

  • Judicial Review
  • Trademark
  • Statement of Grounds
  • Amendment
  • IPOS
  • Administrative Discretion

17. Areas of Law

Area NameRelevance Score
Judicial Review90
Trademarks80
Administrative Law75
Intellectual Property Law70
Civil Procedure60
Corporate Law10
Criminal Revision5

16. Subjects

  • Administrative Law
  • Trademark Law
  • Civil Procedure
  • Judicial Review