Perdigao Agroindustrial SA v Barilla GER Fratelli-Societa Per Azioni

Andrew Ang J:

[1] There were two appeals before me. Registrar’s Appeal No 63 of 2009 was the plaintiff’s appeal against the assistant registrar’s (“AR”) decision on 10 February 2009 dismissing the plaintiff’s application for an extension of time to serve Originating Summons No 1497 of 2008 (“notice of appeal”). The said Originating Summons was itself an appeal from a decision of the Principal Assistant Registrar of Trade Mark (“PAR”). Registrar’s Appeal No 62 of 2009, also by the plaintiff, was against the AR’s decision on the same day allowing the defendant’s application to strike out the notice of appeal.

[2] The plaintiff/appellant (“Perdigao”) had applied for registration of the mark “BORELLA” in Classes 29 and 30 (“the plaintiff’s marks”) on 16 September 2003. The defendant/respondent (“Barilla”) opposed the plaintiff’s marks on 23 June 2004 (in respect of Class 29) and on 4 August 2004 (in respect of Class 30) after they had been accepted for publication.

[3] The oppositions were heard together at the Intellectual Property Office of Singapore on 22 July 2008. On 22 October 2008, the PAR issued her grounds of decision. She dismissed the defendant’s opposition in respect of the Class 29 mark but allowed the defendant’s opposition in respect of the Class 30 mark.

[4] On 24 November 2008, the plaintiff applied by way of Originating Summons No 1497 of 2008 to the High Court appealing against the decision of the PAR with respect to the plaintiff’s Class 30 mark. The notice of appeal was served on the defendant’s solicitors on 23 December 2008.

[5] The PAR’s letter enclosing her grounds of decision was dated 22 October 2008 but received by the plaintiff on 28 October 2008.

[6] The plaintiff filed its notice of appeal on 24 November 2008 and, on the same day, telephoned the defendant’s solicitors informing them that the plaintiff had filed an appeal and that the plaintiff would be serving the same on the defendant shortly thereafter.

[7] Under O 87 r 4(3) of the Rules of Court (Cap 322, R5, 2006 Rev Ed):

Reading this literally, the defendant contended that the 28-day period started from 22 October 2008. The plaintiff, on the other hand, relied on, inter alia, Pestbusters Pte Ltd v Registrar of Companies [1996] 2 SLR 780 where the learned judge, Kan Ting Chiu J, held that the time ran from the date the decision was given to the appealing party. The AR ruled in favour of the plaintiff and there has been no appeal by the defendant thereon. Strangely, it is noted the defendant still maintained in its written submissions (para 6) that the time for appealing the PAR’s decision started running from 22 October 2008.

[8] By the AR’s reckoning therefore, the notice of appeal was filed within time. However, the notice of appeal was not served on the defendant until 23 December 2008, 22 days later.

[9] Only after receiving a letter from the defendant’s solicitors objecting to the service out of time did the plaintiff file its application for an extension of time on 19 January 2009.

[10] The affidavit in support of the plaintiff’s application was affirmed on 16 January 2009 by the plaintiff’s solicitor, Mr Colin Phan (“Mr Phan”). In paras 7 and 8 thereof, he deposed as follows:

[12] The AR nevertheless directed that the order was not to be extracted until after the supplementary affidavit had been filed by the plaintiff’s solicitor without the defendant having any objection to the same.

[13] The supplementary affidavit filed by the plaintiff’s solicitor on 3 February 2009 (“the plaintiff’s 3rd affidavit”) deposed as to particulars of the move, in particular, that preparations took place between November and December 2008 but did not explain how the office relocation was related to the oversight or the delay of 22 days for the late service of the notice of appeal. Consequently, the defendant objected to this affidavit and its solicitors wrote to the court on 4 February 2009 requesting for further arguments.

[14] In their letter of 4 February 2009, the defendant’s solicitors cited Tan Chai Heng v Yeo Seng Choon [1980-1981] SLR 381 pointing out that in that case, even though the solicitors in question had clearly explained the reason for the delay, namely, that the file was misplaced due to renovations, the reason was still not accepted by Choor Singh J to be sufficient to merit the exercise of discretion in favour of the applicant. (As will be seen later, the defendant’s reliance on that decision was misplaced.)

[15] The AR heard further arguments on 10 February 2009. At that hearing, the AR asked (AR minutes at p 4):

The defence counsel replied:

[16] Prior to that exchange, the AR had (at the hearing of further arguments) asked the plaintiff’s solicitor to respond to the defence counsel’s objections that the supplementary affidavit did not explain why or how the move caused the delay. The plaintiff’s solicitor when asked by the AR whether the move worsened the oversight of the matter, agreed that it did.

[17] Further on, the AR told the plaintiff’s solicitor (at p 2):

It would appear that the learned AR was, even then, prepared to consider the plaintiff’s solicitor’s explanation how the relocation caused the delay. It would perhaps be best if I set out the AR’s minutes as to what followed thereafter (at pp 2 and 3):

[18] The AR then reluctantly recalled his earlier orders made on 2 February 2009 giving these brief grounds (at pp 5 to 7):

[19] I pause here to observe that from the AR’s minutes, it would appear that he did not consider that the authorities left it open to him to allow an extension when the delay was caused by the oversight of the clerk or the solicitor. I noted that his minutes suggested that even at the first hearing, he had not given serious thought to the clerk’s or solicitor’s oversight as being a ground for the application. Hence, his requirement that the plaintiff file a further affidavit to show that the relocation was the cause of the delay.

[20] It is also clear that the supplementary affidavit did affirm that “the preparation for the relocation of our premises mainly took place between November 2008 and December 2008”. At the further hearing before the AR, the plaintiff’s solicitor had also explained that it was during the process of the move, when the packing procedure began, that the oversight occurred (see [17] above). Whilst the plaintiff’s solicitor failed to make the connection explicit, a fair inference, in my view, is that the preparation for the move (in the packing of the files into boxes) contributed to the oversight.

[21] At the hearing before me, the plaintiff’s solicitor dealt with the four factors which a judge takes into account in the exercise of his discretion whether or not to grant an extension of time. He argued that although, admittedly, there had been a delay in service of the notice of appeal caused by a clerical oversight, taking into account:

(a) the fact that the defendant’s solicitors had been informed of the appeal on the same day that the notice of appeal was filed;

(b) the reasons for the delay;

(c) the fact that the plaintiff had a real and substantial chance of success on the merits if the application for extension of time was granted; and

(d) that there would be no prejudice to the defendant if the extension was granted,

the delay was not so substantial as to be fatal to the plaintiff’s appeal before me.

[22] The plaintiff further argued that despite the defendant having had notice since 24 November 2008 that the plaintiff had filed the notice of appeal, and having belatedly been served on 23 December 2008, the defendant had nevertheless not raised objection when on 24 December 2008 the plaintiff’s solicitor wrote to the Registry of the Supreme Court requesting for an adjournment of the original hearing date of 7 January 2009 to a special date. Neither did it object when, on 8 January 2009, the Registry reverted to both sets of solicitors informing them of the special date fixed for 24 February 2009. The plaintiff therefore contended that, by not raising any objection (and therefore inferentially consenting) to the adjournment, the defendant had formed an intention to defend the case on its merits at the appeal. The plaintiff’s solicitor argued that by reason of O 2 r 2(1) of the Rules of Court, the defendant was to be taken as having waived the irregularity in the late service. (On this particular point, there was no authority cited to me to show that the defendant’s inaction prior to 16 January 2009 (when it applied to set aside the notice of appeal) amounted to a “step” in the proceedings. For my part, I would be inclined to the view that it did not.)

[23] It is trite law that granting of 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: Pearson v Chen Chien Wen Edwin [1991] SLR 212 (“Pearson”) at [17] and [20]. In Hau Khee Wee v Chua Kian Tong [1986] SLR 484 (“Hau Khee Wee”), Chan Sek Keong JC enunciated the factors for the court’s consideration in deciding whether to exercise its discretion. Chan JC held that (at 488):

[24] This has since been approved and adopted by the Court of Appeal as the definitive framework for the exercise of discretion to grant extension of time: see Pearson at [17] ([23] supra); more recently in Lai Swee Lin Linda v Attorney-General [2006] 2 SLR 565 at [45] and Lee Hsien Loong v Singapore Democratic Party [2008] 1 SLR 757 (“Lee Hsien Loong”) at [18]. Given the breadth of authorities available on the issue, I would distill the salient points derived from them.

[25] First, although the emphasis, in the first instance is invariably on the first two factors, viz, the length of delay and the reason for the delay, all four factors are of equal importance and must be taken into account. They are to be balanced amongst one another, having regard to all the facts and circumstances of the case concerned: see Lee Hsien Loong at [19] and [28].

[26] Second, the court looks to substance as opposed to merely form. There is no real difference in substance between an application to extend time for service of a notice of appeal filed within time and an application for leave to file a notice of appeal out of time. This is because an appeal would only come into being where the notice is both filed and served: see Lee Hsien Loong at [29]; and AD v AE [2004] 2 SLR 505 (“AD v AE”) at [9]. Therefore, the court will take the same approach towards both applications.

[27] Third, 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: see The Tokai Maru [1998] 3 SLR 105 at [20]. This is because of the need for finality. In such applications, the applicant had already been heard and the decision concerned had gone against him. Thus, the onus is therefore on the applicant to file an appeal if he feels that the decision is wrong. If no appeal is filed and served within the prescribed time, the successful party is justly entitled to assume and act as if the judgment is final. Underlying this concern with finality is the fundamental rationale of justice and fairness: see Lee Hsien Loong at [33] ([24] supra).

[28] Fourth, on a more general note, the courts are sedulous to balance adherence to procedural requirements with substantive justice. On the one hand, although the courts are concerned with achieving substantively just outcomes, there must be fairness in the procedure. Procedural rules are intended to facilitate legal proceedings and procedural justice dictates that all parties involved in the proceedings abide by the same rules. On the other hand, the courts ought to be wary of a blind adherence to procedure without regard to the substantive outcomes. Where there is tension between the demands of procedural and substantive justice, the courts are required to balance the needs of both. In United Overseas Bank Ltd v Ng Huat Foundations Pte Ltd [2005] 2 SLR 425, Andrew Phang Boon Leong JC held (at [8]) (cited in Lee Hsien Loong at [36]):

[29] The necessary implication of this balancing exercise is that each case must be assessed in its proper factual matrix. In the same vein, in Lee Chee Wei v Tan Hor Peow Victor [2007] 3 SLR 537 (“Lee Chee Wei”), V K Rajah JA held (at [82]):

Although Rajah JA’s observations were made in the context of pleadings (in that case, the court exercised its discretion to order an assessment of damages despite the failure by the plaintiff to plead damages), the general principles of civil procedure enunciated are equally applicable to the present situation.

[30] Those sagacious injunctions resonate with the timeless observations of Bowen LJ in Cropper v Smith (1884) 26 Ch D 700 at 710 (albeit, again in the context of amendment of pleadings):

[31] We may now apply the framework for the exercise of discretion to the present case.

[32] The length of delay is almost invariably considered together with the reason(s) for the delay. Exceptionally short delay may be excused without lengthy inquiry into the reason therefore: Lee Hsien Loong ([24] supra) at [21]. The longer the delay, the better ought the reason therefor to be. In Denko-HLB Sdn Bhd v Fagerdala Singapore Pte Ltd [2002] 3 SLR 357 (“Denko”), where there was an application to allow late filing of a request for further arguments, the Court of Appeal held that, considering that the period allowed to apply for further arguments was only seven days, a delay of 14 days was “quite substantial” (see Denko at [18]). The court noted (at [13]) that:

The court then went on to say (at [18]):

[33] In AD v AE ([26] supra), the Court of Appeal found that the filing of the notice of appeal 49 days out of time was a substantial delay. There again the Court did not stop there. It noted that the bare reason offered for the delay, viz, that it was due to “inadvertence”, could hardly suffice and agreed with the judge below that it was a “poor excuse”. Accordingly, although the low thresholds for the third and fourth factors had been crossed, an extension of time was not granted.

[34] It is therefore difficult to state conclusively when a delay would be deemed too lengthy to warrant an extension. Ultimately, “each case involving procedural lapses or mishaps must be assessed in its proper factual matrix” (see Lee Chee Wei ([28] supra) at [82]).

[35] Here, the PAR’s judgment was received on 28 October 2008. The notice of appeal was filed on 24 November 2008, which was within the time allowed for the filing of notice. However, the notice of appeal was served on 23 December 2008, which was 22 days out of time. Although the length of the delay was relatively long (considering the period allowed for service under O 87 r 4(5) is seven days), this was in itself inconclusive. I therefore proceeded to assess the other factors for consideration.

[36] In the court below, the AR felt bound by precedents, in particular AD v AE ([26] supra) and Stansfield Business International Pte Ltd (trading as Stansfield School of Business) v Vithya Sri Sumathis [1999] 3 SLR 239 (“Stansfield”), to hold that where the delay was caused by oversight of the solicitor (or his clerk), courts were generally unforgiving. I found that the AR had given undue weight to Stansfield and erred in his interpretation of AD v AE.

[37] In Stansfield, Chao Hick Tin J in the High Court held 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: see Stansfield at [33]. With respect, the authorities in support cited to the learned judge and on which he relied were mainly based on civil procedure rules different from the applicable rules in Singapore. I shall deal with each of them:

(a) In Re Coles and Ravenshear [1907] 1 KB 1 (“Coles and Ravenshear”), the solicitor failed to serve a notice of appeal in time due to a misunderstanding of the relevant rule. The court, in refusing to grant leave to appeal, held that a solicitor’s mistake does not constitute special circumstances warranting an extension of time. However, this decision was revisited in Gatti v Shoosmith [1939] Ch 841 (“Gatti”) where the English Court of Appeal departed from it. Sir Wilfrid Greene MR highlighted that at the time that Coles and Ravenshear was decided, the English rules of procedure provided that the power of the court to extend time for appealing required some special matter because under the rules, the appeal could not be brought except by special leave of the Court of Appeal. Sir Greene MR therefore held that following the changes to the rules of procedure, the decision in Coles and Ravenshear was no longer good law and that a mistake on the part of a legal adviser might be sufficient to warrant the court exercising its discretion favourably. The decision in Gatti was not cited to the learned judge in Stansfield, even though, as with post-1909 English law, the civil procedure rules in Singapore do not require “special” leave to appeal.

(b) In Chin Hua Sawmill Co Sdn Bhd v Tuan Yusoff bin Tuan Mohamed [1974] 1 MLJ 58, the Federal Court held that a solicitor’s mistake resulting in a failure to serve notice was not a ground for granting special leave. As with Coles and Ravenshear, the court was dealing with a rule where “special” leave was required to appeal.

(c) In Cheah Teong Tat v Ho Gee Seng [1974] 1 MLJ 31, the High Court held that merits alone was not sufficient by itself without special circumstances to warrant the grant of an extension of time to file appeal. However, in the case itself, the High Court, upon consideration of both Coles and Ravenshear and Gatti, applied Coles and Ravenshear on the grounds that the Malaysian civil procedure rules were the same as pre-1909 English law.

(d) In Tan Chai Heng v Yeo Seng Choon ([14] supra), Choor Singh J refused to grant an extension of time to file a notice of appeal despite the solicitor’s explanation that the cause papers were misplaced when the office was undergoing renovations. Choor Singh J relied (at 382) on a “long line of cases which show further 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”. As noted above, that “long line of cases” was premised on “special leave’ being required under the rules of procedure.

(e) Finally, in Vettath v Vettath [1992] 1 SLR 1, owing to a confusion over which of two solicitors representing the applicant should file the notice of appeal, the period for filing the notice of appeal expired without it being filed. On the facts, the Court of Appeal held that the applicant had not shown grounds sufficient to persuade the court to show sympathy to him. However, the Court did not go further to say that a solicitor’s mistake would not suffice as a ground for sympathy.

[38] It is significant that in Nomura Regionalisation Venture Fund Ltd v Ethical Investments Ltd [2000] 4 SLR 46 (“Nomura Regionalisation”), Chao Hick Tin JA, upon having the opportunity to consider Gatti ([36(a)] supra), re-visited his earlier decision in Stansfield ([36] supra) and held at [28]:

[39] Hau Khee Wee ([23] supra) was precisely a case where a solicitor’s error did not preclude the extension of time, Chan Sek Keong J held (at [16]) that:

In that case, the failure to file the record of appeal in time was a result of the desire of the appellant’s solicitor to make available all the evidence before the court and his mistake in not realising that the appeal record could have been filed without certain photographs he was seeking to obtain.

[40] In AD v AE ([26] supra), the other authority the learned AR felt constrained by, the Court of Appeal was influenced by other factors in deciding not to exercise its discretion. Significantly, despite the substantial delay, there was no reason apparent to explain the “oversight” except that it was “inadvertent”: see above at [33]. Unsurprisingly, the court held that the said reason was a “poor excuse”. The case was therefore not decided on the basis that a solicitor’s oversight would never be a good enough reason for the court to exercise its discretion.

[41] There is therefore no special rule which suggests that the courts should be less forgiving towards delays caused by the oversight of the solicitor (or for that matter, his clerk) or that a solicitor’s mistake would not suffice to warrant the court exercising its discretion.

[42] Returning to Nomura Regionalisation ([38] supra), it is noted in passing that Chao JA went on to observe that two aspects which seemed to have considerable bearing in the court’s consideration in Gatti ([37(a)] supra) and Palata Investments Ltd v Burt & Sinfield Ltd [1985] 2 All ER 517 (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) to grant extension were:

(a) the fact that notice within the prescribed time was given to the other side that an appeal would be taken (such indeed was the case here); and

(b) the mistake was understandable and not gross.

Chao JA stated that there could be other circumstances under which a solicitor’s mistake would be sufficient to persuade the court to show sympathy to the application: see Nomura Regionalisation at [28].

[43] In the present case, although the plaintiff, in both his affidavit and supplementary affidavit, failed to satisfy the learned AR that there were sufficient reasons to warrant the court exercising its discretion favourably (the learned AR being of the view that “where the delay is caused by the oversight of [the] clerk and/or solicitor, the courts are unfortunately not very forgiving”), at the hearing before the AR, the plaintiff was given another opportunity to state his reasons. The plaintiff submitted that the delay was caused by a clerical oversight contributed to by the relocation of the plaintiff’s solicitor’s firm. This was unlike the cases of AD v AE ([26] supra), Denko ([31] supra) or Stansfield ([36] supra) where the plaintiff’s solicitors relied on pure oversight to explain the delay (see above at [32], [33] and [38]).

[44] The defendant relied entirely on the first two factors, that is, the length of delay and the reason for delay. It is noteworthy that the defendant itself conceded that the appeal was not hopeless and that no prejudice was suffered by it. Instead, the defendant submitted that the first two factors were the determining factors in this case. However, as I noted, the Court of Appeal in Lee Hsien Loong ([24] supra) held that all four factors are of equal importance and must be taken into account. I therefore proceeded to consider the other two factors to decide if the application should be granted.

[45] When deciding whether to exercise its discretion to extend time to file a notice of appeal, it is not for the court to go into a full-scale examination of the merits of the issues involved. The test is whether the appeal was hopeless (see Nomura Regionalisation ([38] supra) at [32]). 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: see Aberdeen Asset Management Asia Ltd v Fraser & Neave Ltd [2001] 4 SLR 441 (“Aberdeen”) at [43] and Lee Hsien Loong ([24] supra) at [19].

[46] Here, the defendant acknowledged that the appeal was not hopeless. Since little more is known about the strength of the plaintiff’s case, all we can conclude is that the third factor does not operate against the plaintiff. However, I venture to suggest in passing that, in a case where without the court having to go into a thorough examination the prospects of the applicant succeeding in the appeal are patent, the third factor could assume greater importance. In an appropriate case, absent any prejudice to the would-be respondent, the ties of justice might militate against a denial of the application even if the length of delay might be substantial or the reason for the delay might not be entirely cogent. This harks back to the need to balance the competing demands of procedural and substantive justice summed up in the insightful remarks of Andrew Phang Boon Leong JC in United Overseas Bank Ltd v Ng Huat Foundations Pte Ltd ([28] supra) and V K Rajah JA in Lee Chee Wei ([29] supra). I hasten to add that this is not to say that the third factor will inevitably trump the first and second factors. Each case must be decided on its own facts, balancing all four factors. It is in this light that the remarks of the learned Chao Hick Tin JA in Nomura Regionalisation ([38] supra) at [28] ought to be understood where he characterised Stansfield as “a case of oversight simpliciter, with no other extenuating circumstances, although the merits of the case were strong”.

[47] Prejudice here refers to the prejudice that has been or would be suffered by the would-be respondent that militates against an extension of time being granted. The Court of Appeal in Aberdeen ([45] supra) explained it thus (at [44]):

In the Court of Appeal in Wee Soon Kim Anthony v UBS AG [2005] SGCA 3 at [53]–[54], Woo Bih Li J put it this way in a passage cited with approval by the same Court in Lee Hsien Loong ([24] supra) (at 24):

[48] In further elaboration of what “prejudice” means, the Court of Appeal in AD v AE ([26] supra) held that there must be some form of irreversible or permanent change of position. It held (at [14]):

[49] Here, the defendant did not contend that there would be any prejudice caused to it if an extension of time was granted. I also noted that on the day the notice of appeal was filed, the plaintiff’s solicitor had also informed the defendant’s solicitors that the plaintiff had filed an appeal and that the plaintiff would be serving the notice shortly after (see above at [20]). The defendant was therefore not caught unaware.

[50] In the exercise of my discretion whether or not to grant the extension of time, I am not fettered by the decision of the AR. It is my duty to consider the matter afresh and to exercise my own discretion, of course having due regard to the decision below but being in no way inhibited by it (as held in Evans v Bartlam [1937] AC 473 which was approved in Chang Ah Lek v Lim Ah Koon [1999] 1 SLR 82 at [18]–[20]). This is in contrast to an appeal to the Court of Appeal, where 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: see AD v AE ([26] supra) at [23]; Westacre Investments Inc v The State-Owned Company Yugoimport SDPR (also known as Jugoimport-SDPR) [2009] 2 SLR 166 (“Westacre Investments”) at [17]. The starting presumption would be that the judge had rightly exercised his discretion: see Westacre Investments at [18].

[51] Moreover, in the present case it would appear, as I have earlier shown, that the AR had been under the misapprehension (fostered no doubt by the submissions of the defendant’s solicitors) that he was bound by the authorities to disallow an extension if it was caused by the oversight of the applicant’s solicitors.

[52] Contrary to the holding of the AR, an oversight by the applicant’s solicitor or his clerk may be a ground for the court to exercise its discretion. Furthermore, unlike the other cases where, in the absence of sufficient explanation, the court refused an application to extend time, the plaintiff’s solicitor in this case was able to offer some explanation for the oversight (see [43] above). Whilst counsel for the plaintiff’s presentation of the reason for the delay was not compelling, it was, to my mind, worthy of consideration.

[53] Therefore, considering all the factors, I found that although the length of delay was substantial, the oversight of the plaintiff’s solicitor in the total factual matrix sufficed for the court to show sympathy. The appeal was not hopeless and the defendant would not be prejudiced by the extension of time to serve notice. In fact, the defendant had been informed of the notice of appeal on the very day it was filed. I therefore came to the conclusion, balancing the four factors, that the balance came down on the other side to that chosen by the learned AR.