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Trade Marks Journal No. 040/2010
Page No. lxiv
G) CIRCULARS RELATED TO PROCEEDINGS BEFORE THE HEARINGS AND
MEDIATION DIVISION
HMD 2009 Circulars
Applications for Security for Costs (HMD Circular No. 1/2009, dated 20 November 2009)
Section 70 of the Trade Marks Act (Cap 332) 2005 Rev. Ed. provides:-
If a person who neither resides nor carries on business in Singapore —
(a) gives notice of opposition under section 13; or
(b) applies to the Registrar under section 22 or 23 for the registration of a trade mark to be
revoked or to be declared invalid, as the case may be,
the Registrar may require the person to give security for the costs for the proceedings and
may, if security is not given, dismiss the proceedings.
[Emphasis added].
It is clear from the above that the application for security for costs can be a 2 - stage
process. Thus, the Registrar will deal with such applications as a 2-stage process.
(I)
Application for security for costs
Firstly, provided that a person neither resides nor carries on business in Singapore, the
Registrar then has the discretion to require a person to provide security for costs of the
proceedings, but only if the Registrar thinks it is just to do so in the circumstances of the
case.
The factors that would be taken into consideration in deciding whether to grant security for
costs in a trade mark opposition, invalidation or revocation are similar to the factors that
would be taken into account in deciding whether to grant security for costs in a civil suit.
Thus as provided in the Singapore Civil Procedure (“the White Book”), such factors include,
amongst others:-
(i)
(ii)
(iii)
the likelihood of the opponent succeeding;
whether the order for security for costs will stifle a genuine claim; and
where the opponent is a limited company, whether there is any evidence that the
opponent is unable to pay costs.
Based on a consideration of the above, the Registrar then may or may not order security for
costs to be given.
(II)
Application for proceedings to be dismissed
In the event that the party whom the Registrar has ordered to provide security for costs fails
to do so, the party to whom security for costs has been granted can then apply for the
proceedings to be dismissed. The Registrar will call for submissions in writing from both
parties and exercise her discretion to decide whether the proceedings should be dismissed.
If parties request an interlocutory hearing to decide the issue, or if the Registrar thinks it
appropriate, the Registrar may also fix an interlocutory hearing to hear the parties in person.