[Trademark Update] High Court Clarifies the Meaning of “At the Same Time” in Opposition’s Counterstatement Service
Summary - Trademark Opposition's Counterstatement Service
In a recent trademark opposition case, the High Court clarified that “at the same time” under Regulation 24(2) of the Trademarks Regulations 2019 does not necessarily mean that a counterstatement must be served on the opponent on the exact same day it is filed. A two-day delay in service does not automatically result in the trademark application being deemed withdrawn. Instead, the Registrar has discretion to consider the circumstances of each case, including the length of the delay, any prejudice caused, and whether withdrawal would be proportionate.
Suit No.
WA-24IP-41-10/2025
Parties
Plaintiff: GSP Automotive Group Wenzhou Co., Ltd.
Defendant: GS Yuasa Corporation
Trademark
TM No. TM2024030120 “GSP” (stylised) in Class 9 in the name of GSP Automotive Group Wenzhou Co., Ltd.
Important Facts
30.04.2025
The Defendant filed and served a notice of opposition against the Plaintiff’s trademark application.
28.07.2025
The Plaintiff filed the counterstatement.
30.07.2025
The Plaintiff served the Defendant with a copy of the counterstatement.
30.07.2025
The Defendant objected to the Plaintiff’s service as it was not served on the same day as filing, i.e. 28.07.2026.
Issue
Whether the Registrar has erred in deeming the Plaintiff’s trademark application as withdrawn due to alleged non-compliance with Regulation 24(2) of the Trademarks Regulations 2019 in respect of counterstatement service.
Regulation 24 of the Trademarks Regulations 2019 provides as follows:
24. Filing of counterstatement
(1) The applicant shall, within the period of two months from the date of receipt of the notice of opposition from the opponent, file a counterstatement with the Registrar accompanied by payment of the prescribed fee.
(2) At the same time as the filing of the counterstatement, the applicant shall send a copy of the counterstatement to the opponent.
(3) The applicant shall file with the Registrar an affidavit of service, within fourteen days from the date of sending the copy of the counterstatement to the opponent, where the affidavit of service shall contain proof of the date of receipt by the opponent of the counterstatement, and failure to do so shall result in the application for registration of trademark deemed withdrawn.
(4) Where the applicant fails to file a counterstatement within the specified period, the application for registration of trademark, in so far as it relates to the goods or services in respect of which the opposition is directed, shall, unless the Registrar otherwise directs, be deemed withdrawn.
The question before the High Court was whether “at the same time” means that the counterstatement must be served on the opponent on the same day it is filed, and whether a two-day delay in service warrants the trademark application being deemed withdrawn.
High Court’s Findings
By reading Regulation 24 in full, the legislature has prescribed the consequences of its non-compliance, except Regulation 24(2).
Regulation 24(1): Has to file a counterstatement within two months of receipt of the Notice of Opposition.
Regulation 24(4): If breaching Regulation 24(1), the application is deemed withdrawn "unless the Registrar otherwise directs".
Regulation 24(3): Has to file an affidavit of service within 14 days, "failure to do so shall result in the application for registration of trademark deemed withdrawn”.
Regulation 24(2): Requires service of a copy on the opponent "at the same time as the filing of the counterstatement."
Regulation 24(2) does not specify any consequence. If the legislature has intended that “non-simultaneous filing and service would result in automatic withdrawal, it would have said so expressly, as it did in Regulations 24(3) and 24(4)”.
Therefore, in the absence of explicit statutory consequences, the failure to serve the counterstatement “at the same time” does not automatically warrant deemed withdrawal.
The High Court then moved on to consider the purpose and practicality of Regulation 24(2); the said regulation is to ensure that:
The opponent receives timely notice in order to prepare for the next stage of the opposition; and
The MyIPO knows that the opponent has been served – making sure that both parties are on an equal footing.
The High Court held that both purposes were satisfied in the present case, as the Defendant still had ample time before the next procedural stage. The Defendant’s strict interpretation would transform the said regulation into a “technical trap” that removes a trademark application for a trivial procedural deviation.
Therefore, the Registrar has the discretion to determine the consequences of non-compliance with Regulation 24(2) on a case-by-case basis, having regard to the circumstances of each case. In the present case, the High Court found that the Registrar had failed to consider relevant factors, including:
the shortness of the delay in serving the counterstatement;
whether the Defendant had suffered any prejudice as a result of the delay;
the Plaintiff’s overall compliance with the procedural requirements;
the merits of the opposition proceedings; and
whether it was proportionate to deem the Plaintiff’s trademark application withdrawn for such a minor procedural deviation.
The High Court therefore held that the Plaintiff’s counterstatement and its service on the Defendant should be accepted, and that the opposition proceedings should continue.
Conclusion
The decision provides an interpretation of “at the same time”. It differs from the MyIPO’s practice prior to the case. We shall see if the parties choose to appeal against the decision to the Court of Appeal.
We shall also take note that the phrase “at the same time” also appears in other provisions in relation to oppositions, namely, serving a notice of opposition, evidence in support of opposition, evidence in support of application, evidence in reply, and extension of time.
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