Cross-Examination Of Witnesses In Proceedings Before The Intellectual Property Office Of Singapore:

Some Factors to Consider When Deciding Whether To Apply for Cross-Examination in Trade Mark Proceedings

I. INTRODUCTION

  1. The Intellectual Property Office of Singapore (“IPOS”) is a low cost tribunal , and the costs that a party may recover from contentious proceedings before the Hearings and Mediation Group of IPOS tend to be limited. For instance, under IPOS’s Scale of Costs , the amount of costs that would be awarded for the attendance of a hearing would be between S$200 to S$800 – this may be said to be substantially less than what would be awarded for the attendance of a similar hearing before the High Court in Singapore .
  2. In light of this, a party (“Party A”) involved in IPOS proceedings may be reluctant to adopt other optional procedural steps, such as applying for the cross-examination of the opposing party’s (“Party B”) witness(es), so as to help better manage its costs. For instance, Party A may decide not to incur additional legal costs in applying for and conducting the cross-examination since the majority of such costs are unlikely to be recovered from the Party B even if Party A succeeds in establishing its case.
  3. Nevertheless, there will be situations where the incurring of such costs may be preferential / necessary in order for Party A to successfully establish or prove its case.
  4. This article therefore discusses some factors relating to an application for cross examination of witnesses in IPOS proceedings relating to trade marks.

II. SCENARIOS WHERE CROSS-EXAMINATION MAY BE DESIRABLE FOR IPOS PROCEEDINGS RELATING TO TRADE MARKS

  1. In general, Party A will need to be able to flesh out all the relevant facts to establish or prove its case. This would in turn generally depend on, inter alia, the following :
    1. the recollection of witnesses (ie. the evidence of witnesses); or
    2. documentary evidence.
  2. To this end, there may be situations where Party B adduces (or refuses to adduce evidence) that it has access to, and which Party A has no prior knowledge of. In such situations, cross examination may help Party A challenge by:
    1. Eliciting helpful admissions, concessions or other relevant evidence from Party B’s witness(es); and/or
    2. Discrediting and casting doubt on the veracity of the evidence of Party B’s witness(es) .
  3. The following are some examples where cross-examination may be especially useful to consider:
    1. Where Party A alleges that Party B has filed a trade mark application in bad faith and seeks to oppose the same under section 7(6) of the Trade Marks Act (Cap. 332), Party B may adduce evidence showing that it allegedly created the trade mark independently and without knowledge of Party A’s trade mark(s) (or other circumstances). In this scenario, Party A may not have any evidence of its own to show how Party B created the trade mark and may wish to resort to cross-examination to test the truth of Party B’s evidence. In this regard, it is pertinent to note that in Arjo Wiggins Fine Paper Limited v. Transasia Fine Papers Pvt Ltd [2016] SGIPOS 2, IPOS appears to suggest that it would be necessary for there to be a cross-examination of Party B’s witness(es) in cases where Party A’s case is based on the sole ground of bad faith .
    2. Where Party A applies to revoke Party B’s trade mark for non-use under section 22 of the Trade Marks Act (Cap. 332), Party B may seek to rely on evidence purporting to show use of the trade mark and it is possible that Party A may not have direct evidence to challenge the same (such as if Party B adduced evidence showing purported use at an earlier date in an obscure location (that no longer exists) which Party A would have no way of investigating or verifying) . In such a case, Party A may wish to resort to cross-examination to try to establish whether Party B had fabricated / concocted the said evidence as a mere afterthought, and in doing so try to persuade IPOS to disregard the said evidence adduced by Party B.
  4. Further to the above, IPOS has in HMD Circular No. 4/2015 dated 30 June 2015 (Amended 22 July 2016) stated that “a request for cross-examination is likely to be allowed where it is not disproportionate and unnecessarily costly and burdensome” and set out the following non exhaustive examples where cross examination (by Party A) would be allowed:
    1. Where one of the issues raised in the dispute is bad faith, and cross-examination is to the particulars of bad faith alleged in Party B’s witness(es)’ evidence.
    2. Where Party A has reason to believe that Party B’s witness(es)’ evidence contain unreliable evidence which are relevant to the issues raised in the dispute.
    3. Where there is conflicting evidence on the facts that are relevant to the issues raised in the dispute, and cross-examination would assist in clarifying the situation.
  5. Accordingly, there will be scenarios / situations where Party A s own evidence would not be sufficient to establish its case in IPOS proceedings, and where it may need to apply for cross-examination of Party B’s witness(es) with a view towards trying to establish its case.
  6. Nevertheless, in coming to its decision, Party A must also bear in mind that Party B may as a counter-tactic apply for cross-examination of Party A’s witnesses as well. While Party B’s application is likely to be subject to the same test / requirements (which is further discussed at Section III below), it may be more difficult for Party A to oppose such an application if Party A has itself applied for cross-examination; this is since Party A’s application may be considered as an implicit / implied acceptance that the facts / evidence before IPOS would have to be exposed to the rigours of cross-examination (eg. due to unreliable or conflicting evidence).

III. THE PROCEDURE FOR APPLYING FOR CROSS-EXAMINATION IN IPOS PROCEEDINGS RELATING TO TRADE MARKS

  1. As alluded to above, cross-examination is not an automatic right in IPOS proceedings relating to trademarks, and Party A will have to apply for permission to do the same . Reference is made to Rule 36A(1) of the Trade Marks Rules (Cap.332, r. 1) which states:“The Registrar may, in any particular case, take oral evidence in lieu of or in addition to a statutory declaration and shall, unless the Registrar otherwise directs, allow any witness to be cross-examined on his statutory declaration or oral evidence.”
  2. Once Party A has decided to apply for cross-examination, it should be cognisant of the requirements / procedure required by IPOS, which is set out in HMD Circular No. 4/2015 dated 30 June 2015 (Amended 22 July 2016). In particular, Party A should do the following:
    1. Submit a written request to IPOS (at the earliest opportunity and preferably prior to the Pre-Hearing Review) for leave to cross-examine Party B’s witness(es). The said written request should set out:
      1. The name(s) of Party B’s witness(es) that Party A wishes to cross-examine.
      2. Reasons why cross-examination of each of the witnesses is requested
      3. Specific issues to which cross-examination would, if allowed, be directed. The said issues need not be a list of questions, which IPOS recognises may forewarn Party B and defeat the intended purpose of the cross-examination . Instead, a useful starting point would be considered “what”, “where”, “when”, “which”, “how”, and “who” questions .
      4. An explanation of the relevance of the issues in sub-paragraph (iii) above to the matters to be decided in the proceedings. In the event that the issues to be cross-examined on are not relevant or material, it is possible that IPOS may refuse the request.
      5. An estimate of the time required for cross-examination, bearing in mind that IPOS is a low cost tribunal and is unlikely to allow lengthy periods of cross-examination . In this regard, it would appear from the case of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09 that a period of 30 minutes to 1 hour per witness would be acceptable .
    2. Extend a copy of the said written request to Party B (or any other parties to the proceedings).
  3. After Party A has submitted its written request, Party B would have an opportunity to respond to Party A’s request by writing to IPOS to set out it objections / position, before IPOS provides an indication / decision on whether to grant Party A permission to cross-examine Party B’s witness(es). Depending on the circumstances in question, an interlocutory hearing may be required before IPOS makes a decision.
  4. Should Party A be granted permission to cross-examine Party B’s witness(es), it should be mindful to keep within the allowed scope during the actual conduct of the cross-examination. This is particularly since “untrammelled latitude to cross examine a witness will not be granted [by IPOS] ” and it is likely that any attempts to go beyond the scope allowed will be objected to by IPOS and/or Party B.

IV. CONCLUDING REMARKS

  1. Whether Party A decides to apply for cross-examination will depend on a multitude of factors, and each set of facts and circumstances should be carefully considered on a case-by-case basis.
  2. Should Party A be minded to apply for cross-examination, it should ensure that it has a clear understanding and indication of why it wishes to do so and what it intends to achieve from the same. This would in turn have an impact on whether Party A is able to persuade IPOS (and/or Party B) to allow it to cross-examine Party B’s witness(es), and whether Party A is able to rely on this to help establish its case.

If you would like to have further information on this write-up, please contact:

Samuel Wee
Partner
Yusarn Audrey (Singapore)
D: (65) 6358 2865
F: (65) 6358 2654
samuel@yusarn.com

[1] See Section C of HMD Circular No. 1/2015 dated 25 May 2015
[2] See the Fourth Schedule of the Trade Marks Rules (Cap. 332, r. 1); the Fourth Schedule of the
[3] See Appendix G of the Supreme Court Practice Directions which sets out guidelines for party-and party costs awards in the Supreme Court of Singapore.
[4] See [05.008] and [09/053] of Eleanor Wong et al., Modern Advocacy: Perspectives from Singapore (2008).
[5] See [07.012] of Eleanor Wong et al., Modern Advocacy: Perspectives from Singapore (2008).
[6] [5] of Arjo Wiggins Fine Paper Limited v. Transasia Fine Papers Pvt Ltd [2016] SGIPOS 2 states:
Neither of the deponents [of the Registered Proprietors’ evidence] was called to the stand as witnesses for cross-examination, despite the case being based on the sole ground of bad faith under Section 23(1) read with Section 7(6) of the Act.”

[7] See [64] and [74] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09.
[8] See [70] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09.
[9] See [29] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09
[10] See [79] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09.
[11] See [83] to [85] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09.
[12] See [68] and [69] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09.
[13] See [90] to [94] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09.
[14] See [90] to [94] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09
[15] See [76] of Tan Jee Liang trading as Yong Yew Trading Company v. FMTM Distribution Ltd [2016] SGIPOS 09

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2019-12-09T12:01:01+08:001 Nov 2016|Publications And Insights|