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[2017] ZAGPPHC 75
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Dynasol Elastomers, S.A. DE C.V v SK Global Chemical Co. Ltd (19764/2015) [2017] ZAGPPHC 75 (3 March 2017)
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
Case
No: 19764/2015
3/3/2017
REPORTABLE:
No
OF
INTEREST TO OTHER JUDGES: No
REVISED
In
the matter between:
DYNASOL
ELASTOMERS, S.A DE
C.V
Applicant
and
SK
GLOBAL CHEMICAL CO.
LTD
Respondent
JUDGMENT
J
W LOUW, J
[1]
The applicant applied to the Registrar of Trade Marks on 21 November
2011 for registration of the trade mark
Solprene.
The
respondent made application for registration of its trade mark
SUPRENE
on 14 March 2012. The respondent's application was
accepted and advertised in the Patent Journal of 27 March 2013. In
terms of s
21 of the Trade Marks Act 194 of 1993 (the Act), any
interested person may, within three months of the date of
advertisement or
within such further time as the registrar may allow,
oppose the application in the prescribed manner.
[2]
The applicant learnt of the advertisement for opposition during May
2013. On 4 June 2013, the applicant's attorneys addressed
a letter to
the registrar in which it requested the registrar in terms of
s 52(1)
of the
Trade Marks Act 194 of 1993
not to issue a certificate of
registration for a period of three months.
Regulation 52(1)
provides
the following:
Any
person interested in opposing a trade mark application may request
the Registrar, on written notice before the expiry of the
term in
which to enter opposition to the application in terms of
section 21
,
not to issue the certificate of registration for a period of three
months from the date of expiry of the aforementioned term,
and the
Registrar shall not do so.
[3]
On 16 July 2013, the registrar responded to the applicant's
attorneys' request, informing them that the certificate of
registration
would not be issued until 26 September 2013 and that,
should the applicant request any further extensions, it was required
to proceed
in terms of
regulation 52(2)
or
52
(5), failing which the
certificate would be issued as soon as possible after the said date.
Regulation 52(5)
, which deals with the procedure which is followed
when an extension has been agreed to between the parties, is not
relevant for
present purposes.
Regulation 52(2)
provides as follows:
In
the absence of an agreement between the parties the Registrar may,
upon application on notice in terms of
regulation 19(4)
and on good
cause shown, make an order extending or abridging any time prescribed
by these Regulations or by an order of the Registrar
or fixed by an
order extending or abridging any time for doing any act or taking any
step in connection with any proceedings of
any nature whatsoever upon
such terms as to him seems meet.
[4]
In the meantime, the applicant's attorneys had, on 11 June 2013,
written a letter to the respondent's attorneys informing them
that
the respondent's application for registration of its trade mark
SUPRENE
offends against the provisions of ss 10(12) and 10(15)
of the Act and that the applicant intended formally opposing the
registration
of the respondent's mark should this prove to be
necessary. They demanded that the respondent agree to withdraw its
trade mark
application and undertake not to use the mark or any mark
that can be considered to be confusingly similar to the applicant's
SOLPRENE
trade mark.
[5]
The respondent's attorneys replied on 18 June 2013 that they were
taking instructions from their client. A reminder was sent
by the
applicant's attorneys to the respondent's attorneys on 8 July 2013.
They replied on 15 July 2013 that they were still waiting
for their
client's response, that they would follow up with them and would
contact the applicant's attorneys as soon as they receive
a response.
[6]
On 29 July 2013, the respondent's attorneys advised the applicant's
attorneys in writing that their client was not willing to
withdraw
its trade mark application and that any opposition instituted would
be defended. By this date, the applicant therefore
knew that if it
wished to persist in its opposition to the granting of the
respondent's application, it would have to file its
formal opposition
in the prescribed manner and that it would have to do so on or before
26 September 2013. It also knew that if
it required an extension
beyond 26 September 2013, it would either have to obtain the
respondent's agreement thereto or apply to
the registrar in terms of
regulation 52(2) for such extension.
[7]
Some six weeks later, on 11 September 2013, the applicant's attorneys
wrote an e-mail to the respondent's attorneys, informing
them that
the applicant had
"now"
decided to oppose the
registration of the respondent's mark. It was further stated that the
applicant's attorneys would not be able
to prepare and file the
opposition papers by the deadline at the end of September. The
respondent's attorneys were requested to
agree to a final extension
of the opposition period in order to afford the applicant's attorneys
adequate time to prepare the required
founding papers.
[8]
When the request for an extension of the period was made to the
respondent's attorneys on 11 September 2013, the applicant had
no
assurance that the respondent would agree to the requested extension
or when a response to the request would be received. But
the
applicant still had two weeks within which it could apply to the
registrar for an extension in terms of regulation 52(2). It
did not
do so.
[9]
On 25 September 2013, the day before the expiry of the three months
extension granted by the registrar in terms of regulation
52(1), the
respondent's attorneys advised the applicant's attorneys
telephonically that their client did not agree to an extension
of the
opposition period beyond 26 September 2013. This was confirmed by the
respondent's attorneys by e-mail on 30 September 2013.
[10]
The applicant's attorneys did not, as one would have expected,
immediately file an application with the registrar in terms
of
regulation 52(2) for the extension which the applicant required.
Instead, they waited until 6 January 2014 before filing the
prescribed notice of opposition and the applicant's founding
affidavit. The founding affidavit accompanying the notice had been
deposed to on 12 December 2013.
[11]
In the notice of opposition, the applicant sought an order condoning
the late filing of the notice of opposition and founding
affidavit
and an order refusing registration of the respondent's trade mark
application in class 17 and removing it from the trade
marks
register. It is not clear why an order was sought removing the mark
from the register as it had not been placed on the register.
The
registrar has referred the proceedings to the court in terms of s
59(2) of the Act.
[12]
In support of its application for condonation, the following is said
in the applicant's founding affidavit after dealing with
the
chronology of events between May 2013, when it became aware of the
respondent's trade mark application, and 29 July 2013:
"7.8
When it became apparent that the Trade Mark Applicant would not
withdraw its trade mark application, the Opponent instructed
Adams
and Adams through its Mexican attorneys, to prepare the notice of
opposition and the founding affidavit. However, the Opponent
needed
some
time to ascertain and confirm all of the relevant details
and to obtain evidence of its use of the SOLPRENE trade mark in South
Africa. The Opponent is based in Mexico, and it instructs Adams and
Adams through its local attorneys,
so
that the liaising
between the various parties necessarily results in time delays."
The
founding affidavit thereafter refers to the exchanges between the
parties' respective attorneys from 11 to 30 September 2013
and then
states the following:
"7.12
The Opponent has been diligent in its approach to the matter and did
not delay matters unduly or without cause. The slight
delay in
launching these proceedings after being advised that the Trade Mark
Applicant would not withdraw its trade mark application,
was
primarily caused as a result of the time required to obtain the
relevant details and evidence of use of its SOLPRENE trade
mark in
South Africa, which it had to do in the interest of presenting a full
and complete case. It did not intentionally cause
the delay or ignore
the relevant rules or regulations.
7.13 Therefore, when
it became clear that the Trade Mark Applicant would not grant an
extension of the opposition term, the Opponent
instructed that an
application for condonation should simultaneously be prepared and
filed together with the opposition that it
was already in the process
of preparing. The Opponent has acted as swiftly as possible in having
the relevant affidavits prepared
and in launching these proceedings.
7.14 The Opponent has
provided a reasonable explanation for its delay in filing its notice
of opposition and its founding affidavit.
In the circumstances, its
application for condonation is we/I-founded. It is also clear from
the Opponent's explanation that it
has not been reckless, nor has it
intentionally disregarded the Rules of Court.
7.15 Furthermore, the
Opponent has filed its application for condonation together with its
notice of opposition and its founding
affidavit, showing that it has
good reason for its opposition, so as not to cause any further delays
in these proceedings. It is
clear, therefore, that the application
for condonation was not lodged for the purpose of delaying the
opposition proceedings.
7.16 Condoning the
late filing of the Opponent's notice of opposition and founding
affidavit will not, in any way, prejudice the
Trade Mark Applicant's
rights."
[13]
The applicant has conflated its application for condonation with its
opposition to the registration of the respondent's mark.
An
application for condonation is a distinct application to which
separate considerations apply and which does not have to be dealt
with simultaneously with opposition proceedings. It may be dealt with
in a separate hearing before the registrar. Regulation 19(3)
makes
specific provision for such a hearing. Sub-regulations (a) to (d)
provide the following:
(a)
Notwithstanding the aforegoing subregulations, an interlocutory or
other application incidental to pending proceedings or a pending
application, including an application for an extension of time and
condonation, may be brought on notice supported by such affidavits
as
the case may require and be set down at a time assigned by the
Registrar.
(b)
If the
applicant in such an application wishes to rely on particular facts
not apparent from the official record, an affidavit must
be fifed at
the Office at least 10 court days before the hearing. In the event
that the applicant does not file an affidavit, it
shall be presumed
that he intends to rely on those facts which are properly before the
Registrar. At any time within the period
allowed for the filing of
such an affidavit by the applicant, he may give written notification
to the other party and to the Registrar
that he intends to rely on
the facts which are properly before the Registrar.
(c)
After the
applicant has filed his affidavit, the other party may file an
answering affidavit at least seven court days before the
hearing. In
the event that the applicant does not fife an affidavit in support of
his application, the other party may file an
affidavit at least seven
court days before the hearing, setting out such facts as he may
consider relevant.
(d)
At least
four court days before the hearing, the applicant may file an
affidavit replying to any facts set out in the answering
affidavit.
[14]
In
Grootboom
v National Prosecuting Authority and Another
[1]
the Constitutional Court
said the following:
"It
is now trite that condonation cannot be had for the mere asking. A
party seeking condonation must make out a case entitling
it to the
court's indulgence. It must show sufficient cause. This requires a
party to give a full explanation for the non-compliance
with the
rules or court's directions. Of great significance, the explanation
must be reasonable enough to excuse the default."
[15]
The applicant has failed to give a full explanation for its failure
to file its opposition papers before the deadline of 26
September
2013. The only explanation proffered in the founding affidavit is
that the applicant needed
"some time"
to ascertain
and confirm all of the relevant details and to obtain evidence of its
use of the SOLPRENE trade mark in South Africa.
It added that
the applicant is based in Mexico and that it instructs Adams and
Adams through its local attorneys so that the liaising
between the
various parties necessarily results in time delays. No details are
given and there is no explanation of why it took
the applicant more
than five months after 29 July 2013 to file its opposition papers.
There is also no explanation why the applicant
did not apply to the
registrar in terms of regulation 52(2) for an extension of time or
the filing of its opposition.
[16]
It was submitted in the heads of argument filed on behalf of the
applicant that the stronger the applicant's prospects of success,
the
more any inadequacy in the explanation for the delay may be
overlooked. It was argued that the applicant had good prospects
of
success which tipped the scale in favour of the granting of the
condonation application. In
Chetty
v Law Society, Transvaal
[2]
,
the
Appellate Division said the following at 767J-768C:
"As
I have pointed out, however, the circumstance that there may be
reasonable or even good prospects of success on the merits
would
satisfy only one of the essential requirements for rescission of a
default judgment. It may be that in certain circumstances,
when the
question of the sufficiency or otherwise of a defendant's explanation
for his being in default is finely balanced, the
circumstance that
his proposed defence carries reasonable or good prospects of success
on the merits might tip the scale in his
favour in the application
for rescission. (Cf Melane v Santam Insurance Co Ltd
1962 (4) SA 531
(A) at 532.) But this is not to say that the stronger the prospects
of success the more indulgently will the Court regard the explanation
of the default. An unsatisfactory and unacceptable explanation
remains so, whatever the prospects of success on the merits.
[17]
The above statement by the court related to applications for
rescission of a default judgment, but it applies equally to
condonation
applications. In my view, the applicant has failed to
give a satisfactory and acceptable explanation for the delay. It is
therefore
unnecessary to make any finding in respect of the
applicant's opposition to the respondent's application for
registration of its
trade mark.
[18]
The applicant's application for condonation for the late filing of
its opposition to the respondent's application no. 2012/0665
for
registration of the trade mark SUPRENE is accordingly dismissed with
costs.
Counsel
for applicant: Adv. K L Turner
Instructed
by: Adams & Adams
Counsel
for respondent: Adv. P Cirone
Instructed
by: Spoor & Fisher
[1]
2014 (2) SA 68
(CC) in par.[20]
[2]
1985 (2) SA 757
(A)