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[2016] ZASCA 56
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Trustco Group International (Pty) Ltd v Vodacom (Pty) Ltd and Another (82/2015) [2016] ZASCA 56; 2017 (5) SA 283 (SCA); 2016 BIP 27 (SCA) (1 April 2016)
Links to summary
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
CASE
NO: 82/2015
In
the matter between:
TRUSTCO
GROUP INTERNATIONAL (PTY) LTD
APPELLANT
and
VODACOM
(PTY) LTD
FIRST RESPONDENT
THE
REGISTRAR OF
PATENTS
SECOND RESPONDENT
Neutral
Citation:
Trustco
Group International (Pty) Ltd v Vodacom (Pty) Ltd
(82/2015)
[2016] ZASCA 56
(1 April 2016).
Coram:
Navsa
ADP, Wallis, Petse JJA and Tsoka, Kathree-Setiloane AJA
Heard:
18
March 2016
Delivered:
1
April 2016
Summary:
Power
of Registrar of Patents to extend time periods within which any act
or thing is required to be done in terms of the
Patents Act 57 of
1978
– provisions of
s 16(2)
of the Act not limited by
Regulation 83
, which sets the times for filing a counterclaim in
relation to an application for restoration of a patent.
ORDER
On
appeal from:
Gauteng
Division of the High Court, Pretoria (Makgoba J sitting as court of
appeal).
1.
The appeal is upheld with costs including the costs of two counsel.
2.
The decision of the court below is set aside and substituted as
follows:
‘
The
appeal against the second respondent’s decision to grant the
appellant an extension of time for the filing of its counter-claim
is
dismissed with costs.’
JUDGMENT
Navsa
ADP (Wallis, Petse JJA and Tsoka, Kathree-Setiloane AJJA
concurring):
[1]
This appeal concerns the discretionary power of the Registrar of
Patents to grant extensions of time in relation to time periods
within which any act or thing is required to be done in terms of the
Patents Act 57 of 1978 (the Act). The discretionary power
to grant an
extension of time is set out in s 16 of the Act,
[1]
the provisions of which I shall discuss in due course. First, the
background culminating in the present appeal.
[2]
The appellant, Trustco Group International (Pty) Ltd (Trustco), the
holder of South African Patent no 2010/03199, failed to
timeously pay
prescribed patent renewal fees. The failure to pay the fees resulted
in the lapsing of the patent on 26 November
2011. Trustco applied for
the restoration of the patent in terms of s 47(1) of the Act, which
reads as follows:
‘
Where
a patent has lapsed owing to non-payment of any prescribed renewal
fee within the prescribed period or the extended period
referred to
in section 46(2), the patentee may in the prescribed manner and on
payment of the prescribed fee, apply to the registrar
for the
restoration of the patent.’
[3]
The restoration application was advertised in the Patent Journal on
26 June 2013, as required by s 47(2) of the Act read with
regulations
49 and 50 of the Patent Regulations (the Regulations).
[2]
Section 47(2) reads as follows:
‘
If
the registrar is satisfied that the omission was unintentional and
that no undue delay has occurred in the making of the application,
he
shall advertise the application in the prescribed manner, and
thereupon any person (hereinafter in this section referred to
as the
objector) may within such period as may be prescribed, give notice in
the prescribed manner of opposition to the restoration
of the
patent.’
[4]
The restoration application was opposed by the first respondent,
Vodacom (Pty) Ltd (Vodacom). It filed its notice of opposition
on 26
August 2013. Regulation 83 promulgated in terms of the Act, which was
central to Vodacom’s submissions before us, provides
as
follows:
‘
Within
two months of the filing of service of the notice of opposition the
applicant shall file and serve a counterstatement in
the form of a
plea. If such counterstatement is not lodged within the said period
or within such further period as the registrar
may allow the
application
shall
be deemed to be abandoned
and the opponent may apply to the commissioner for an order as to
costs.’ (my emphasis.)
[5]
Thus, the appellant’s counterstatement would ordinarily have
been due on 26 October 2013. As this was a Saturday, the
counterstatement was due for filing on or before 28 October 2013.
[3]
[6]
On 30 October 2013 the appellant’s former attorneys requested a
two-month extension of time from the registrar within
which to file
the counterstatement. The registrar granted the extension. The first
respondent appealed against this grant of time
to the Commissioner of
Patents (Makgoba J).
[7]
The request for an extension of time was made within two days of the
expiry of the two-month period referred to in regulation
83 and no
prejudice was alleged by Vodacom. It is now necessary to have regard
to the provisions s 16(2) of the Act where the registrar’s
discretionary power is located, it reads as follows:
‘
Whenever
by this Act any time is specified within which any act or thing is to
be done, the registrar or the commissioner, as the
case may be, may
save where it is otherwise expressly provided, extend the time either
before or after its expiry.’
The
section is clear. The registrar has the power to extend any time
provided in the Act or the regulations and may do so either
before or
after its expiry. It is only if it is ‘otherwise expressly
provided’ that this power is restricted.
[8]
Vodacom’s case before Makgoba J was relatively straightforward.
It contended that the provisions of regulation 83, set
out above,
were peremptory and that failure to comply with the time limits set
thereby resulted in the deeming provision being
triggered. When that
happened the application for restoration could rightly be considered
to have been abandoned. It submitted
that the deemed abandonment
precluded the registrar from exercising the power of extending the
time limit in regulation 83.
[9]
Makgoba J construed s 16(2) of the Act as follows:
‘
This
section authorises the registrar to extend the time either before or
after the expiry of the specified time, save where it
is otherwise
expressly provided in the Act and/or the regulations.
The
provisions of section 16(2) are therefore in the nature of a general
provision. This would mean that the registrar is not given
an
unfettered discretion to extend the time periods. If there is a
specific provision to the contrary in the Act and/or regulations,
he
is not entitled to grant an extension.’
[4]
[10]
The court below went on to say the following:
‘
This
is where the deeming provisions of regulation 83 come into the
picture. The regulations promulgated under the
Patents Act are
to be
read conjunctively and not disjunctively with the
Patents Act.
Reading
section 16(2) of the Act conjunctively with regulation 83
would then mean that the registrar cannot just grant an extension of
time in terms of section 16(2) without having regard to the
peremptory and deeming provisions of regulation 83.
Consequently,
the discretion conferred upon the registrar to extend a time period
in terms of section 16(2) cannot override a specific
declaration of
abandonment as set out clearly in regulation 83. Counsel for the
appellant submitted that if that were not so, an
application like
that of the respondent
in
casu
could be extended indefinitely with no certainty as to the end
thereof. I agree.’
[5]
[11]
The Commissioner rejected Trustco’s reliance on
Lunt
v Minister of Health for the Union of South Africa NO
(Lunt
1)
1959 BP 1 at 3F-4A, in which, as a result of the striking out of a
counterstatement , the applicant asked for a further time within
which to file a counter-claim. The applicant in that case had made
the request after the two month period provided for in regulation
83
had already expired. Makgoba J considered that case to be
distinguishable on the basis that the counterstatement there
was initially filed within the prescribed time period even though it
was struck out later.
[12]
Makgoba J referred with approval to the decisions in
Kaltenbach
Thuring Société Anonyme v Grande Paroisse Société
2001
BIP 62 at 65A;
Weekly
Property Trader v L S Erasmus & another
2002
BIP 303 at 306C;
Gateway
Communications (Pty) Ltd v Gateway Data Communications & another
2005
BIP 186 (TPD) para 14-15; and
University
of Pretoria v Registrar of Patents & others
2011
BIP 41 (CP) para 59 and 61. In those cases it was held that it was
not competent to grant an extension of time after the two
month
period.
[6]
The Commissioner
considered himself bound by these decisions and consequently upheld
Vodacom’s appeal with costs and declared
the application by
Trustco for the restoration of the patent to have been abandoned.
[7]
It is against those orders that the present appeal, with the leave of
the court below, is directed.
[13]
In my view, the court below erred in its reasoning and conclusions
referred to above. First, regulation 83 as could be expected,
does
not, in express terms or otherwise, limit or in any way impinge on
the registrar’s express remedial power as provided
for in s
16(2) of the Act. Simply put, it does not otherwise expressly make
provision in relation to the exercise, or for that
matter, the
prevention of the exercise of a remedial discretionary power.
It
provides for the registrar to extend the time limit for the filing of
a counterstatement and is silent on when that power
may be
exercised. Far from expressly providing otherwise it leads directly
to s 16(2). Thus, the regulation does not fall
within the
proviso in s 16(2). It is doubtful that it could.
[14]
In
Rossouw & another v Firstrand Bank Ltd
[2010] ZASCA
130
;
2010 (6) SA 439
(SCA) para 24, this court said the following:
‘
.
. . [I]t is generally impermissible to use regulations created by a
minister as an aid to interpret the intention of the legislature
in
an Act of Parliament, notwithstanding that the Act may include the
regulations, . . .’ (Footnote omitted.)
[15]
Furthermore, as correctly pointed out on behalf of Trustco, a
remedial power, such as the power to extend time periods aimed
at
avoiding harsh results should be extended as far as the wording of a
statutory provision will admit. In this regard, see
Slims
(Pty) Ltd & another v Morris NO
1988 (1) SA 715
(A) at 734D-F and the authority cited therein.
[16]
In addition as submitted further, the rule of statutory
interpretation, that a specific provision overrides a general
provision,
applies to provisions within the
same
legislative instrument. A specific provision in a regulation cannot
override a general provision in a statute. To read the Act
‘conjunctively’ with the Regulations and to construe the
Regulations in the manner resorted to by the court below is
in effect
to have the tail wag the dog.
[17]
I now turn to deal with the cases referred to by the court below. In
Lunt
v Minister of Health for the Union of South Africa No (Lunt 2)
1959 BP 18 the court was rightly concerned about the ‘drastic
result’ of the deeming provision of the applicable rule.
This
caused it to hold that the language of Patent Rule 31(2), which was
similar to the wording of regulation 83, was not to be
extended to a
case where an applicant had in fact timeously lodged a
counterstatement which, subsequently, by operation of the
rules of
pleading, was found to be defective. The court in
Lunt
2
had
regard to prior authorities from which ‘it seems that where no
counterstatement is lodged within the prescribed
period, or an
extension thereof by the registrar under order 31(7) [of Patent
Rules, 1953], no relief from the consequences of
his failure can in
any circumstances be granted to an applicant’.
[8]
However, it did not engage with the issue before it in the manner
discussed earlier in this judgment. In
Gateway
the
court was dealing with a repealed provision of the Trademarks Act 194
of 1993 that contained a deeming provision and was not
confronted
with what is presently being considered.
[18]
In
University
of Pretoria
,
the court was dealing with the refusal of an application for the
rectification of the register of patents. That case dealt with
lapsing in terms of ss 40 and 42 of the Act. It was not dealing with
a situation such as the present nor did it have regard to
what is set
out earlier in this judgment. The concern expressed by the court
below, that, to reason otherwise, is unwarranted and
would enable a
defaulting patent holder to extend the application for restoration
indefinitely is without merit. The discretion
has to be exercised
judiciously and with due regard to the rights of both the applicant
and the objector.
[19]
It was submitted on behalf of Vodacom that a finding that the
registrar’s discretionary power, as provided for in s 16(2)
of
the Act, was not limited by the provisions of regulation 83 would
lead to uncertainty and hardships for those who ‘infringed’
a patent during a period that might extend indefinitely. It was
contended that this was especially so if regard is had to the
provisions of ss 45, 46, 47 and 48 of the Act. These provisions deal
with the effect of the grant of a patent, its duration, the
restoration of a lapsed patent and the rights of patentees after a
patent is restored. Sections 47 and 48, which relate to the
restoration of a patent due to non-payment of prescribed fees, have
within them safeguards such as obliging an advertisement of
the
application and protecting the rights of interested parties during
intervening periods. Thus, the fear of applications extending
indefinitely is more imagined than real. Moreover, s 66 of the Act
restricts recovery of damages for infringement of a patent.
It
provides that a patentee shall not be entitled to recover damages
from a defendant who proves that at the date of the infringement
he
was unaware and had no reasonable means of making himself aware of
the existence of the patent.
[20]
The court below, for the reasons set out earlier, erred in its
reasoning and in its conclusion.
[21]
The following order is made:
1.
The appeal is upheld with costs including the costs of two counsel.
2.
The decision of the court below is set aside and substituted as
follows:
‘
The
appeal against the second respondent’s decision to grant the
appellant an extension of time for the filing of its counter-claim
is
dismissed with costs.’
_____________________
M
S NAVSA
Acting
Deputy President
APPEARANCES:
FOR
APPELLANT:
G Hoffman SC (with him K P Iles)
Instructed
by:
Adams
and Adams, Pretoria
Honey
Attorneys, Bloemfontein
FOR
FIRST RESPONDENT: C J Van
der Westhuizen SC
Instructed
by:
D M
Kisch Inc., Pretoria
Webbers,
Bloemfontein
[1]
Section 16 of the
Act in whole provides the following:
‘
16
Exercise of discretionary power by registrar and commissioner
(1) Whenever any discretionary power
is conferred by this Act upon the registrar or the commissioner, he
shall not exercise that
power adversely to an applicant or an
objector or other person who according to the register appears to be
an interested party,
without (if so required by the applicant or
objector or other interested party within a time fixed by the
registrar or the commissioner,
as the case may be) giving that
applicant or objector or interested party an opportunity of being
heard.
(2) Whenever by this Act any time is
specified within which any act or thing is to be done, the registrar
or the commissioner,
as the case may be, may save where it is
otherwise expressly provided, extend the time either before or after
its expiry.’
[2]
Patent
Regulations, GN R2470,
GG
6247,
15 December 1978 (as amended), promulgated in terms of s
91 of the Act.
[3]
Section 88(2) of
the Act, relating to the computation of time periods under the Act
provides:
‘
Whenever
the last day on which, in terms of this Act, any act may or is
required to be done or any document may or is required
to be lodged,
falls on a day on which the patent office is closed, that act may be
done or that document may be lodged on the
next following day on
which the patent office is open for the transaction of business.’
[4]
Paragraph 11.
[5]
Paragraphs 12 and
13.
[6]
Paragraph 22.
[7]
Ibid.
[8]
At 22A.