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[2014] ZAGPPHC 124
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Cipla Medpro (Pty) Ltd v Societe Des Produits Nestle SA (A395/12) [2014] ZAGPPHC 124; 2014 BIP 146 (GP) (28 February 2014)
IN THE HIGH COURT
OF SOUTH AFRICA
(GAUTENG
DIVISION, PRETORIA)
Appeal
Case No: A395/12
DATE:
28 FEBRUARY 2014
In the matter
between:
CIPLA MEDPRO
(PTY)
LTD
......................................................................................
Appellant
And
SOCIETE DES
PRODUITS NESTLE
SA
................................................................
Respondent
JUDGMENT
FOURIE, J:
[1] This is an
appeal against an order granted by Du Plessis J in an application in
terms of
section 53(1)
of the
Trade Marks Act No. 194 of 1993
. In
that application the respondent applied for an order setting aside an
order granted by the Registrar of Trade Marks in favour
of the
appellant. The order of the Registrar directed the respondent to
produce certain documents for the appellant’s inspection
in
terms of
Regulation 53(1)
and to permit the appellant to make copies
thereof.
[2] The order
granted by the Court a quo and which is the subject matter of this
appeal, reads as follows:
"1. The order
of the Registrar of Trade Marks dated 28 February 2011, directing the
applicant to produce certain documents
for inspection by the
respondent, which is annexed hereto marked A' isset aside.
2. The application
made on 26 July 2010 by the respondent to the Registrar of Trade
Marks in terms of
Rule 35(12)
is refused.
3. The respondent is
directed to pay the costs of this application and of the aforesaid
application before the Registrar of Trade
Marks."
BACKGROUND
[3] The respondent
instituted trade mark opposition proceedings before the Registrar of
Trade Marks in which it opposed the registration
of the appellant’s
trade mark application No. 2007/15572 OPTIFAST in Class 5. It has
been alleged that the respondent’s
founding affidavits made
reference to certain documents and the appellant called upon the
respondent to produce for inspection
documents allegedly referred to
in the affidavits. The respondent refused to produce the
documentation and opposed the request
primarily on the basis that the
founding affidavits “do not refer to any such documents
"1. The
Opponent is ordered to produce the following documents for the
Applicant's inspection and to permit the Applicant to
make copies
thereof;
a) all trade mark
certificates relating to the trade mark registrations for the mark
OPTIFAST;
b) the registration
documentation for the domain name VPTIFAST.CO.ZA1;
c) all contracts,
agreements and written assignments effecting the transfer of the
OPTIFAST business and related trade marks from
Novartis to the
Opponent and/or the Nestle Group - only insofar as said contracts,
agreements and written assignments relate to
the trade mark
registrations in (a) hereabove; and
2. Costs are awarded
to the Applicant"
[5] The respondent
then instituted motion proceedings in this Division to set aside the
Registrar’s order. It relied upon
section 53(1)
of the
Trade
Marks Act No. 194 of 1993
as the jurisdictional foundation for the
relief sought in the High Court. The Court a quo concluded that there
were no grounds
for the Registrar’s order and granted an order
against the appellant as more fully referred to above given, I shall
first
deal with the procedural issue and thereafter, if necessary,
also with the merits of the application.
[6] The appeal is
founded broadly upon two grounds: the first is that the
section 53(1)
application was procedurally irregular. The second is that, on the
merits of the application, the Registrar’s order was correctly
compel the respondent to comply with the said notice. The application
was opposed and argued before the Registrar who granted the
following
order:
THE PROCEDURAL
ISSUE
[7]
Section 53(1)
and (2) of the
Trade Marks Act read
as follows:
“(1) Without
derogating from the provisions of subsection (2), any person
aggrieved by any decision or order of the registrar
may, within a
period of three months after the date of any such decision or order,
apply to the Transvaal Provincial Division of
the Supreme Court for
relief and the said court shall have the power to consider the merits
of any such matter, to receive further
evidence, and to make any
order as it may deem fit.
(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:"
Subsections (3) and
(4) contain provisions in relation to such appeal, whereas subsection
(5) provides that the parties to proceedings
before the Registrar
shall be deemed to be parties to civil proceedings for the purposes
of the Supreme Court Act. Subsection (6)
contains provisions with
regard to every appeal to the Supreme Court of Appeal by virtue of
subsection (5).
[8] The argument
presented on behalf of the appellant can be summarised as follows:
Section 53(1) was not intended to provide for
an appeal against a
judicial decision arising out of opposed proceedings adjudicated upon
by the Registrar. Nor was the section
intended to afford a party to
judicial proceedings a rehearing of the original application in
another forum of equal status. The
subsection provides for the
rehearing of the Registrar’s administrative decisions as
distinct from opposed, judicial proceedings.
The application by the
respondent was nothing other than an appeal, in the narrow sense,
against the Registrar’s order. A
single Judge of the High Court
has no jurisdiction to entertain an application which has as its
purpose the overturning of an order
granted in opposed proceedings by
the Registrar who has the powers and jurisdiction of a High Court
Judge. Furthermore, our law
does not permit appeals against
interlocutory orders and the respondent’s application was, to
all intents and purposes, an
appeal against the Registrar’s
order clothed as a section 53(1) application. Therefore, it was
argued, the application in
the Court a quo ought to have been
dismissed with costs.
[9] It has been
contended on behalf of the respondent that section 53 of the Act
affords two options to a person aggrieved by a
decision of the
Registrar, namely an application to the High Court in terms of
subsection (1) and, where an appeal is warranted,
an appeal to the
Full Bench of this Division in terms of subsection (2). It was also
pointed out that the words “(w)ithout
derogating from the
provisions of subsection (2)” would not make any sense if the
Legislature had intended parties to the
proceedings to be excluded
from being able to rely on the provisions of subsection (1) of the
Act. It was also submitted that the
words “any person”
were not intended to exclude the parties to the proceedings and if
this was the intention, this
would have been expressly stated.
[10] The Court a quo
came to the conclusion that it has the power under section 53(1) of
the Act to entertain an application of
this nature. In coming to this
conclusion Du Plessis J said the following:
"There is in my
view no ground for limiting the plain meaning of 'any person' to 'any
person other than a party mentioned in
subsection (2)'. The Act gives
to the Registrar many powers to make administrative and judicial
decisions or orders. Some of those
are appealable under section 53(2)
and some are reviewable under section 57. There are, however,
decisions and orders that cannot
be dealt with under section 53(2) or
section 57. It is those decisions that are subject to applications to
the High Court under
section 53(1).”
[11] Unfortunately,
I can not agree with this conclusion. To understand the meaning of
(and difference between) section 53(1) and
(2) one has to look at
both the context and the contents thereof. What is the purpose of
section 53(1) in view of the provisions
contained in subsection (2)?
[12] As far as
context is concerned, it appears, broadly speaking, that the powers
and duties of the Registrar in terms of the
Trade Marks Act can
be
divided into two categories, namely administrative and judicial
functions. For instance, in terms of
section 22
the register of Trade
Marks is controlled by the Registrar and in terms of
section 23(1)
,
the Registrar may correct any error in the register made by an
official in his office. These functions appear to be of an
administrative
nature. On the other hand,
section 45
sets out the
general powers of the Registrar. It appears that these powers relate
more specifically to “any proceedings before
him".
Subsection (1) specifically provides that with regard to these
proceedings, the Registrar shall have al! such powers
and
jurisdiction as are possessed by a single Judge in a civil action.
These are judicial powers.
[13] The word
“proceedings” is not defined in the Act, but
section
45(2)
provides that where no provision is contained in this Act on
any matter of procedure, the Registrar shall apply the rules
governing
procedure in this Division of the Supreme Court.
Furthermore, it also appears that the words “any proceedings”
should
be interpreted to mean opposed and unopposed proceedings. It
is in this context that the contents of
section 53(1)
and (2) are to
be considered.
[14]
Section 53(1)
refers to “any person aggrieved by any decision or order of the
Registrar”, whereas subsection (2) refers to “any
party
to any opposed proceedings before the Registrar”. It therefore
appears that the Legislature intended to distinguish
between opposed
and unopposed proceedings or, to put it more precisely, between any
decision or order pursuant to opposed proceedings
on the one hand and
any other decision or order, whether of an administrative or judicial
nature, on the other hand. This interpretation
is supported by the
fact that subsection (1) refers to "any person aggrieved”,
i.e. not necessarily a party to any proceedings,
whereas subsection
(2) specifically refers to any party to any opposed proceedings.
Furthermore, the procedure envisaged by subsection
(1) is that of an
application (“apply’), whereas subsection (2), read with
subsections (3), (4) and (5), makes provision
for appeal procedure.
For reasons to follow it is not necessary to decide whether this
appeal procedure refers to an appeal in
the wide sense or in the
ordinary sense (cf. Tiklv & Others v Johannes. N.O. & Others
1963 (2) SA 588
(T) at 590F and the authorities referred to), or to
express any view with regard to (possible) appeals against
interlocutory orders
in terms of the
Trade Marks Act or
not.
[15] Furthermore,
the words “(w)ithout derogating from the provisions of
subsection (2)” as they appear in
section 53(1)
usually
indicate an intention not to lessen the effect of another provision.
In this instance it appears that subsection (1) is
a general
provision, whereas subsection (2) is the special provision. This
expression therefore indicates that the general provision
is not
intended to lessen the weight to be given to the special provision.
The general maxim is generalia specialibus non derogant
which
requires that greater weight should be given to special provisions
than to general provisions. Or, to put it differently,
the general
must yield to the special. This is in accordance with the dictum
referred to in R v Gwantshu
1931 EDL 29
at 31:
" 'When the
Legislature has given attention to a separate subject and makes
provision for it the presumption is that a
subsequent general
enactment is not intended to interfere with the special provision,
unless it manifests that intention very clearly’...
In such
cases it is presumed to have only general cases in view and not
particular cases which have been already otherwise provided
for by
the special Act."
(See also in this
regard: Mngomezulu & Others v Soweto City Council
1989 (2) SA 331
(A) at 341 E -H.)
[16] When these
principles are applied to the provisions of
section 53(1)
and (2) it
appears that the Legislature has specifically made provision that the
general provision is not intended to interfere
with the special
provision and therefore subsection (1) should yield to subsection
(2). In other words, it is presumed that subsection
(1) should only
have general cases in view and not also particular cases which have
been provided for in subsection (2). It would
therefore be a mistake
to include in the general provision a part of the special provision
by accepting that “any person’7
as referred to in
subsection (1) should include “any party” referred to in
subsection (2). Consequently, a party to
any opposed proceedings
before the Registrar may not make use of the procedure provided for
in subsection (1). That procedure is
not intended to be available to
a person who is a party to opposed proceedings before the Registrar.
For such a person subsection
(2) has been enacted.
[17] This brings me
to the appeal before us. Both the appellant and the respondent are
parties, not only to pending opposed proceedings
(the main
proceedings), but they have also been parties to opposed proceedings
in terms of the
Regulation 53(1)
application. If the interpretation
referred to above is applied to these proceedings, then I have to
find that the Court a quo
came to an incorrect conclusion. In my view
the respondent was not entitled to rely upon the provisions of
section 53(1)
of the
Trade Marks Act No. 194 of 1993
. In view of this
conclusion it is not necessary to consider the merits of the
application.
[18] In the result I
propose the following order:
(a) The appeal is
upheld with costs.
(b) The order of the
Court a quo is set aside and replaced with:
"The
application is dismissed with costs."
DS FOURIE
JUDGE OF THE HIGH
COURT
JORDAAN I AGREE
and it is so ordered.
E JORDAAN
JUDGE OF THE HIGH
COURT KUBUSHI, J: I agree.
JUDGE OF THETHKiH
UUUKI Date: 24 February 2014
CASH A395/2012
FOR TI IE
APPELLANT: ADV MARK SEALE
INSTRUCTED BY:
BRIAN BACON INC, PRETORIA
FOR THE
RESPONDENT: ADV L G MARTIN I
NSTRUCTED BY:
ADAMS & ADAMS, PRETORIA