Judgment

1       The applicants, Reemtsma Cigarettenfabriken GmbH, a company incorporated in Germany, on 5 February 2002 filed Originating Motion No 600007 of 2002 (“OM 600007/2002”) and Originating Motion No 600008 of 2002 (“OM 600008/2002”) to rectify the Singapore Register of Trade Marks by revoking therefrom the entry relating to Trade Mark Nos T87/05010G “HUGO BOSS” and T74/59825G “BOSS” (collectively and individually referred to as “the subject mark”) on the ground that the respondents had not within the period of five years following registration, put to genuine use, in the course of trade of the respondents, goods for which the respective trademark was registered and/or that such use of the subject mark has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use. On 19 February 2002, the applicants were granted leave to serve out of the jurisdiction on the respondents in Germany a true copy each of Notice of OM 600007/2002 and Notice of OM 600008/2002.

2       On 12 October 2002, the respondents filed two separate applications pursuant to O 12 r 7 Rules of Court (Cap 332, R 5) for, inter alia, an order declaring that Notice of OM 600007/2002 and Notice of OM 600008/2002 have not been duly served on them outside of the jurisdiction. At the conclusion of the hearing, I made no order on both applications. The respondents have appealed against my decision.

3       Judith Eckl, the respondents’ legal counsel, on 8 October 2002 swore two similar affidavits in support of the O 12 r 7 applications. She deposed that the respondents had not received a copy each of the relevant Notice of Originating Motion as they were not amongst the documents inside the two packages left by the process server Mr Buck of the bailiff’s office of the local court at Bad Urach. She further deposed that the document, which she described as a “letter of service”, signed by Mr Buck before he left the premises, made no mention that the relevant Notice of Originating Motion was included in the respective package of documents.

4       It was submitted that in the circumstances, the applicants by error failed to serve the respondents and as no service of the relevant process took place at all, the court has no jurisdiction to hear and try the originating motions. Moreover, it was argued that such a fundamental omission could not be categorised as an irregularity capable of cure under O 2 r 1.

5       I accepted the respondents’ submission that the basis of jurisdiction of the court depended on service. This is clear from s 16(1)(a)(ii) Supreme Court of Judicature Act (Cap 322), which provides:

16. —(1)   The High Court shall have jurisdiction to hear and try any action in personam where —

         (a)    the defendant is served with a writ or other originating
process —

…

(ii)    outside Singapore in the circumstances authorised by and in the manner prescribed by Rules of Court; …

6       From the affidavit evidence filed by the applicants, the applicants had adequately demonstrated that they had complied with O 11 r 4. As proof of service of OM 600007/2002 and OM 600008/2002, M/s Rodyk and Davidson, solicitors for the applicants, exhibited in the affidavit of Lee Su Yee filed on 14 October 2002, a certificate of service, which the firm received on 7 August 2002 from the Registry, Supreme Court. The certificate was issued by the judicial authorities of the District Court at Bad Urach (“the Service Certificate”). The English translation of the Service Certificate was exhibited in Lee Su Yee’s third affidavit filed on 28 October 2002. Accompanying the English translation of the certificate is Mr Jörn Gaedcke’s certification confirming the correctness of the translation together with a certification from the Embassy of the Federal Republic of Germany in Singapore of Mr Gaedcke’s signature and qualification for making the translation in his capacity as registered translator for English and German languages at the Embassy of the Republic of Germany in Singapore. By contrast, the document described in Judith Eckl’s affidavit as “letter of service” was not accompanied by any official certification of the translation. I would mention that not the entire document was translated into the English language. Only selected segments were translated. The identity of the translator was also unknown.

7       At the hearing, both parties accepted the accuracy of the translation and took no procedural objection that the two documents translated into the English language did not satisfy the requirements of O 92 r 1.

8       It is helpful to set out in full the English translation of the Service Certificate:

10 AR 37/2002 and

10 AR 38/2002

                                      Service Certificate

The service of the court documents attached to the application of the Embassy of Singapore dated 5.7.2002:

One letter each of the lawyers Rodyk & Davidson dated 10.6.2002, File No. IAN/LSY/01-03371-2 concerning the applications No. 60007 [sic] and 60008 [sic] including appendices.

Originating motion No. 60007 [sic] of the year 2002 with regard to the Markenschutzgesetz (approx. Trademark Registration Act) (Chapter 332) and with regard to the trademark No. T87/05010G between Reemtsma Cigarettenfabrik GmbH and Hugo Boss AG dated 5.2.2002 including appendices.

Originating motion No. 60008 [sic] of the year 2002 with regard to the Markenschutzgesetz (approx. Trademark Registration Act) (Chapter 332) and with regard to the trademark No. T74/59825G between Reemtsma Cigarettenfabrik GmbH and Hugo Boss AG dated 5.2.2002 including appendices.

– each in English with a German translation –

to company Hugo Boss AG, Dieselstr.12, 72555 Metzingen, was carried out on 24.7.2002 through the handing over to the employee, Mrs. Eckl, after an authorised representative of company Hugo Boss AG was not found on the business premises.

72574 Bad Urach 25.7.2002

District Court

[Signature]

Wezel

Master at Common Law

9       The respondents did not take issue with the genuineness of the Service Certificate. Under O 11 r 3(7), the document is deemed to be an O 11 r 3(5) certificate of service. Counsel for the respondents submitted that it is not clear from the language used that the originating motions were served. The Service Certificate did not list the documents served. I disagreed with counsel. It is apparent from the English translation of the Service Certificate that OM 600007/2002 and OM 600008/2002 were served on the respondents on 24 July 2002. By O 11 r 3(5), the certificate of service is evidence of the facts as stated in the certificate and of the facts on which those facts are based. To say that the statement in the certificate is “evidence” means that it is prima facie evidence of the fact stated. And, it is sufficient evidence for a court to find that fact proved.

10     From the outset, the respondents had the task of proving non-service. The legal burden remained throughout on the respondents to satisfy the court on the balance of probabilities that the originating motions were not served. In the course of the case, the applicants adduced the Service Certificate as evidence to show service. That evidence passed the evidential burden of proof on to the respondents. The weight to be given to the respondents’ affidavit evidence was undermined by the Service Certificate. The respondents neither challenged the validity of the Service Certificate nor adduced further counter-evidence to displace the Service Certificate. In view of the conflicting evidence before me, the respondents had not satisfied me on a balance of probabilities that the originating motions were not served at all. I therefore made no order on their applications.

11     On the view which I have taken, it was not necessary to discuss the arguments that the failure to serve the respondents was a mere irregularity.

No order made on both applications.

Reported by Gillian Koh.