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[2011] ZAGPPHC 59
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Nycomed Austria GMBH v Cipla Medpro (Proprietary) and Another (A758/09) [2011] ZAGPPHC 59; 2011 BIP 152 (GSJ) (18 April 2011)
REPORTABLE
IN THE NORTH GAUTENG
(HIGH COURT OF SOUTH
AFRICA)
Case No: A758/09
DATE:18/04/2011
In the matter between:
NYCOMED AUSTRIA
GMBH
................................................
Appellant
And
CIPLA MEDPRO
(PROPRIETARY)
...........................
First
Respondent
THE REGISAR OF TRADE
MARKS
.....................
Second
Respondent
JUDGMENT
MAVUNDLA, J.
[1] This is an
interlocutory application in terms of Rule 30(2)(b) brought by the
first respondent for an order on the following
terms:
“
1. That
condonation for the first respondent’s failure to comply with
the time periods provided for in Rule 30(2)(b) be granted
and that
time periods for filing the application in terms of Rule be extended.
2. That the irregular
proceedings taken by the appellant on 20 August 2009 embodies in the
appellant’s notice titled “Appellant’s
Notice of
Appeal” be set aside in its entirety, alternatively, in part;
3. That the irregular
proceeding taken by the appellant on 24 November 2009 embodied in the
appellant’s notice of “Application
for Hearing Date for
the appeal in terms of Rule 46(6)(a)” be set aside in its
entirety, alternatively, in part;
4. That the irregular
proceedings taken by the appellant on 24 November 2009 embodied in
the appellant’s notice effecting
an amendment be set aside in
its entirety, alternatively, in part;
5. That the appellant
be given leave to amend or withdraw the notice dated 20 August 2009
and 24 November 2009 within 10 days
of the date of the order;
6 That the appellant be
given leave to amend or withdraw the notice dated 1 October 2009
within 10 days of the amendment or withdrawal
of the notice of
appeal.
7 That until such time
as the appellant has complied with the orders set out herein above it
shall not take any further step in
the cause, save to apply for an
extension of time within which to comply with the terms of this order
8 Further and/ or
alternative relief;
9 Costs of suite.”
[2] This matter is a
tapestry of comedies of irregularities, particularly on the part of
the appellant, which, no matter how much
it tried to rectify, the
first respondent would not be appeased. The first respondent is,
however, also not without any blemish.
However, what is certain is
that both parties are desirous in locking horns, once more, on the
main issue that unleashed the current
application.
[3] The main issue, which
is the chagrin of the appellant, is the judgment of the registrar of
trades, delivered on 21 May 2009,
which the appellant is appealing
against, which reads:
“Having
considered all the
documents and all the arguments submitted to me in relation to this
opposition, the following judgment is made:
“(i) the application to strike
out is dismissed with costs
(ii) the opposition is dismissed
with costs
the trade mark application no.
2006/12167 FEXCO DEVICE to proceed to registration.
The opponents shall pay the
Applicant’s costs.”
1
[4] There is, however,
uncertainty as to what is the correct judgment, because at paginated
page 143 transcript 35 it is recorded
as follows:
“
PRESIDING
OFFICER
Okay, thank you. Yeah, I haven’t
read the papers and having heard you very persuasive submissions, I
mean from both Counsel
for the Trade Mark Applicant and Counsel for
the Opponent, it is hereby ordered that, one an application to…”
I shall later revert to
this judgment.
BACKGROUND
[5] This matter is a
sequel to a trade mark registration application no. 2006/12167 Fexo &
device in class 5 (the “trade
mark application”) by the
appellant which was heard by the Registrar of Trade Marks on 21 May
2009. The Registrar ordered
that, one, the application to strike out
be dismissed with costs, two, the trade mark application proceeds to
registration with
the appellant to pay the costs of the opposition
(the “judgment”).
[6] The appellant not
content with the Registrar’s decision noted an appeal against
this decision. What follows is a chronological
sequence tat unfolded
culminating to the present application.
6.1. On 20 August 2009
Nycomed filed the original notice of appeal against the judgment,
except the order dismissing the strike
out application;
6.2 On 3 September 2009
the first respondent filed a notice in terms of rule 30(2)(b). The
cause of complaint was that then first
two grounds of appeal are in
fact grounds of review and should be deleted together with various
paragraphs in support thereof;
6.3 On 8 September 2009
the Registrar filed his reasons for the judgment;
6.4 On 15 September 2009
the appellant filed a notice of intention to amend the original
notice of appeal in terms of rule 28(1)
(the “first amendment”
which proposed to insert further grounds of appeal based on the
reasons for the judgment;
6.5 On 29 September 2009
the first respondent objected to the first amendment on the basis
that the cause of complaint in its rule
30(2)(b) notice of 3
September 2009 have not been addressed by the proposed amendment;
6.6 On 1 October 2009
the appellant filed a notice of application for a hearing in terms of
rule 46(3)(a);
6.7 On 9 October the
first respondent objected to the notice for the a hearing date in
terms of rule 30(2)(b) on the basis that
the original notice of
appeal is invalid.
6.8 On 26 October 2009
the appellant replied to the first respondent’s objection,
stating that the original notice of appeal
was amended;
6.9 On 30 October 2009
the appellant filed a notice of intention to amend that sought , in
the preamble, to
further
amend the
amended
notice
of appeal (the
‘second
amendment’)
6.10 On 24 November 2009
the appellant effected the second amendment by filing the amended
pages in terms of rule 28(7);
6.11 On 10 December 2009
the first respondent objected to the rule 28(7) notice in terms of
rule 30(2)(b) on the basis that the
second amendment purports to
amend an amended notice of appeal which document does not exist as
the first amendment was not effected;
6.12 On 22 December 2009
the appellant filed a rule 30, alternatively rule 30A notice
objecting to the late filing of Cipla’s
latest
rule
30(2)(b) notice; and
6.13 On 19 January 2010
the first respondent launched this application in terms of rule
30(2)(b).
[7] The issues to be
determined firstly whether the original notice of appeal complies
with rule 49(3) and, if so, secondly whether
the or not the notice is
assailable on the grounds that it allegedly contains impermissible
review grounds; and thirdly whether
the amended notice of appeal of
November 2009 effectively amended the original notice of appeal.
[8] According to the
first respondent, rightly so, the appellant filed several documents
which have their stated aim to prosecute
an appeal against the
registrar’s decision. The first respondent complained to the
appellant about the defective nature of
its notices filed to
prosecute the appeal and invited it to remedy the defects. However,
the appellant, notwithstanding its purported
efforts to remedy the
defects, still failed to do so. The first respondent further stated
in its heads of argument that it brought
this application to compel
the appellant to remedy the defects in its papers and to present its
appeal in an orderly fashion, in
compliance with the Rules.
[9] It is common cause
that the appellant noted an appeal in terms of Section 53(2)
2
of the Trade Marks Act. The appellant’s notice merely referred
to section 53. In its notice of appeal the appellant specifically
tabulated the grounds upon which it relies for the noting of the
appeal.
[10] Section 53(1) of the
Trade Marks Act grants a person aggrieved by the decision of the
registrar, the right to apply to this
court for relief. In terms of
this subsection this court is empowered “to consider the merits
of any matter, to receive further
evidence, and to make any order as
it may deem fit.”
[11] In the matter of
Tilky &
Others v Johannes, N.O. & Others
1963
(2) SA 588
at 591 G-591A it was held that “The word “appeal”
can have different connotations. In so far is relevant to these
proceedings it may mean:
(i) an appeal in the
wide sense, that is, a complete re-hearing of, and fresh
determination on the merits of the matter with or
without additional
evidence or information
(Golden
Arrow Bus Services v Central Road Transportation Board,
1948 (3) SA 918
(AD) at p.924;
SA
Broadcasting Corporation v Transvaal Townships Board and Others
,
1953 (4) S.A. 169
(T) at pp.175-6;
Goldfields
Investments Ltd. v. Johannesburg City Council
,
1938 T.P.D. 551
at 554);
(ii) an appeal in the
ordinary strict sense, that is, a re-hearing on the merits but
limited to the evidence or information on
which the decision under
appeal was given, and in which the only determination is whether that
decision was right or wrong (e.g.
Commercial
Staffs (Cape) v. Minister of Labour and Another
1946 C.P.D. 632
at p. 638-641);
(iii) a review, that is,
a limited re-hearing with or without additional evidence or
information to determine, not whether the decision
under appeal was
correct or not, but whether the arbiters has exercised their powers
and discretion honestly and properly (e.g.
R
v. Keeves
,
1936 A.D. 410
at pp. 416-7;
Shenker
v. The Master
,
1936 A.D. 136
at pp. 146-7).
[12] In my view section
53(2) deals with an appeal in the ordinary strict sense as envisaged
to under (ii) in the Tikly matter,
whereas, subsection (ii) deals
with an appeal in the widest sense as envisaged subsection (i) in
Tikly matter.
[13] The appellant’s
grounds of appeal in the original notice of appeal are that the
registrar erred, when he dismissed with
costs the appellant’s
opposition to the registration of the trade mark, in making a
decision without having considered the
papers and the evidence
provided in support of the opposition. The registrar erred in
deciding that he did not have to read the
papers in making a
decision.
[14] Rule 49(3), which is
peremptory provides, demands that a notice of appeal should indicate
whether the whole or part of the
judgment is appealed against. It
also demands that “the grounds upon which the appeal is
founded” be succinctly specified.
It does not permit widely
couched grounds,that permit the opponent to canvass any issue not
contained in the record
3
.
[15] The first
respondent’s salvo in terms of rule 30 (2)(b) against the
original notice of appeal, was that the notice of
appeal does not
disclose whether the whole or part of the judgment, which findings
and or ruling of law are appealed against and
which are the grounds
appealed against.
4
There was merit in the complaint taken by the first respondent.
[16] The appellant, in an
attempt to remedy the complainant raised by first appellant, filed a
notice in terms of rule 28(1) of
its intention to amend on 15
September 2009 simultaneous with the notice to amend marked AA1
5
.
This solicited yet another objection from the first respondent which
was filed on 29 September 2009, within ten days from 15 September
2009.
6
[17] The first respondent
raised various concerns,
inter
alia
,
that the envisaged amendment seeks to introduce evidence, indicating
that the appellant seeks to proceed by way of review. Notwithstanding
this objection and without remedying the cause complained of, the
appellant simply proceeded to apply for a date of hearing of
the
appeal, per its notice dated 1 October 2009
7
.
I deem it not necessary to traverse all the aspects raised in this
matter. It suffices to state that I am of the view the first
respondent quite correctly raised its objections regarding the
irregularity in the respective notices of the appellant.
[18] Section 53(1) of the
Trade Marks Ac, in my view, falls within the ambit of (i) mentioned
in Tikly matter (supra), an appeal
in the widest sense. The first
appellant has proposed to the appellant that s53(2) does provide a
combination of an appeal and
review process, and that the latter
should rather proceed under rule 53(1). I agree with this proposal.
The reason for this is
because, as pointed out in paragraphs [3]
and[4] supra, there is confusion as to what precisely was said by the
registrar. For
there to be clarity, it might require evidence to be
lead in that regard. This cannot b done under a strict appeal (ii)
mentioned
in the Tilly matter.
[19] Both parties would
want some finality to this matter. The matter is of importance to
both parties because it deals with the
registration sought by the
appellant falls within class 5. The registration is for trade mark no
2006/12167 in respect of the goods
in class 5: “ pharmaceutical
and veterinary preparations for medical purposes, dietetic substances
adapted for medical use,
food for babies, plasters, material for
dressing, material for stopping teeth, dental wax, disinfectants,
preparations for destroying
vermin fungicides”. The first
respondent relies on its trade mark registration for the mark XEFO
under trade mark registration
no 1998/05349 in class 5 in respect of
the following goods: “Pharmaceutical preparations and
substances, analgesic and/or
anti-inflammatory agents for medical
use. It is clear that their interest are not far removed from each
other. It is therefore
important that clarity should be elucidated,
and this can only be done through both parties allowed to lock horns
on this aspect
on appeal, whichever way the appellant is advised to
package the dispute. In the exercise of my discretion, whatever
imperfections
there may be in both respective parties’ papers,
I am of the view, that the prayers proposed in the first
respondent’s
application in fairness to, and the interest of
the parties should be granted
8
.
[20] In so far as the
costs are concerned, I am of the view that the general principle that
they follow the event should apply.
[21] In the result I make
the following order:
(1) That condonation for
the first respondent’s failure to comply with the time periods
provided for in Rule 30(2)(b) be and
is hereby granted and that the
time periods for filling of the applications in terms of the Rule be
extended.
(2) That the irregular
proceeding taken by the appellant on 20 August 2009 embodied in the
appellant’s notice entitled ‘Appellant’s
Notice of
Appeal’ is set aside in its entirety.
That the irregular
proceeding taken by the appellant on 1 October 2009 embodied in the
appellant’s notice of ‘Application
for a Hearing Date
for the appeal in terms of Rule 49(6)(a)’ is set aside in its
entirety.
That the irregular
proceeding taken by the appellant on 24 November 2009 embodied in
the appellant’s notice effecting an
amended is set aside in
its entirety.
That the appellant be
and is hereby given leave to amend or to withdraw the notices dated
20 August 2009 and 24 November 2009
within 10 days of the date of
the order.
That the appellant be
and is hereby given leave to amend or to withdraw the notice dated 1
October 2009 within 10 days of the
amendment or withdrawal of the
notice of appeal.
That until such time as
the appellant has complied with the orders set out hereinabove it
shall not take any further step in the
cause, save to apply for an
extension of time within which to comply with the terms of this
order.
That the appellant is
ordered to pay costs of this application.
N.M.
MAVUNDLA
JUDGE
OF THE HIGH COURT
DATE OF JUDGMENT : 18/04/2011
APPICANT`S ATT : ADAMS &
ADAMS
APPICANT`S ADV :
ADV A LAPAN
RESPONDANT`S ATT : BRIAN BACON &
ASS
DEFENDANT`S ADV : ADV M SEALE
1
Paginated page 141 of the papers, transcript page
33.
2
“53(2) any party to any opposed proceedings
before the registrar may appeal to the Transvaal Provincial Division
of the
Supreme Court against any decision or order pursuant to such
proceedings .”
3
Songono v Minister of Law and Order
1996 (4) SA 384
at 385G-H.
4
The relevant notice is dated 3 September 2009,
paginated page 123.
5
Paginated pages 126-131, with a copy of the
judgment marked A1 at paginated pages 132-143 and various
correspondence.
6
Rule 28(2)
7
Paginated pages 156-157.
8
United Plant Hire (Pty) Ltd v Hills and Others