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[2014] ZAGPPHC 306
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Adcock Ingram Intellectual Property (Pty) Ltd and Another v Actor Holdings (Pty) Ltd (57255/2013) [2014] ZAGPPHC 306; 2014 BIP 191 (GP) (27 May 2014)
IN
THE HIGH COURT OF SOUTH AFRICA
(GAUTENG
DIVISION. PRETORIA)
CASE NO. 57255/2013
In the matter
between:
ADCOCK INGRAM
INTELLECTUAL PROPERTY (PTY) LTD
…
.............................
1
st
OPPONENT
ADCOCK INGRAM
HEALTHCARE
(PTY)
.....................................................................
2
nd
OPPONENT
and
ACTOR HOLDINGS
(PTY)
LTD
.................................................................
TRADE
MARK APPLICANT
JUDGMENT
LI VORSTER, AJ:
[1] The First
Opponent and Second Opponent are Objectors to the registration of a
trade mark in the name of the Trade Mark Applicant.
[2] The Opponents
apply for condonation for the late objection to the registration of
the trade mark in the name of the Trade Mark
Applicant. It is common
cause that the trade mark application was filed on the 4
th
of June 2010 and accepted by the Registrar of Trade Marks on the 10
th
of June 2010 and advertised for opposition purposes in the Patent
Journal of 29
th
of August 2012. The statutory period for
lodging opposition to the registration of the trade mark lapsed on
29
th
of November 2012. Notice of opposition was lodged and
served on the 11
th
of January 2013.
[3] The parties
reduced the dispute before me to legal argument on the question
whether condonation of the late lodging of the objection
of the
Opponents is at all competent in terms of the applicable legislation.
It is necessary to have regard to the relevant sections
and
regulations of the
Trade Marks Act, 1993
. The Trade Mark Applicant
contended that condonation is not possible, whereas the Opponents
contended that it is possible.
[4]
Section 45
of
the
Trade Marks Act provides
as follows:
“
(1)
The Registrar shall, In connection with any proceedings before him,
have all such powers and jurisdiction as are possessed by
a
single
judge in a civil action before the Transvaal Provincial Division of
the Supreme Court.
(2) Where no
provision is contained in this Act on any matter of procedure, the
Registrar shall apply the rules governing procedure
in the Transvaal
Provincial Division of the Supreme Court.
(3) Whenever by
this Act any time is specified within which any act is to be
performed or thing is to be done by any person, the
Registrar may, on
appiication by that person and unless othenwise expressly provided,
extend the time either before or after its
expiration. ”
[5]
Section 29
of
the Act provides as follows:
“
(1)
When an application for registraton of a trade mark has been accepted
and advertised in the prescribed manner and either
>
(a) the
application has not been opposed and the time for notice of
opposition has expired; or
(b) the
appiication has been opposed and has been granted,
the registrar
shall register the trade mark as on the date of the lodging of the
application for registration, and that date shall,
subject to the
provisions of section 63, for the purposes of this Act be deemed to
be the date of registration: Provided that where
it appears to the
registrar, having regard to matters which came to his notice after
acceptance of an application, that the trade
mark has been accepted
in error, he may withdraw the acceptance and proceed as if the
application had not been accepted.
(2)
On the registration of a trade mark
,
the registrar
shall issue to the applicant a certificate in the prescribed form of
the registration thereof sealed with the seal
of the trade marks
office."
[6]
Regulation 52
provides as follows:
“
52.
Extension of time and condonation
(1) Any person
interested in opposing a trade mark application may requrest 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 fora period of three months
from the date of expiry of the aforementioned term, and
the Registrar
shall not do so.
(2) In the
absence of an agreement between the parties the Registrar may, upon
application or notice in terms of
regulation 18(4)
and on good cause
shown, make an order extending or abridging any time prescribed by
these Regulations or by any 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 to him seems need.
(3) Any such
extension may be ordered although the application is not made until
after the expiry of the time prescribed or fixed,
and the Registrar,
when ordering any such extension, may make such order as to the
recording, varying or cancelling of the results
flow from the terms
of any order or from these regulations,
(4)
The Registrar may, on good cause shown, condone any non-compliance
with these Regulations
."
[7] The Opposing
parties to the registration of the trade mark lodged their objection
to the registration outside the time limits
prescribed for the
lodgment of objections. They applied for condonation for the late
filing of the objection to the Registrar of
Trade Marks. The
Registrar referred the matter to this Court for decision.
[8] The merits of
the grounds upon which condonation is sought by the Opponents is not
in issue in these proceedings. A single point
of law is in issue.
That point is the question whether an application for condonation can
lawfully be entertained by the Registrar
if opposition to the
registration of the trade mark had not been lodged timeously within
the time prescribed. The Opponents argue
that condonation can
lawfully be granted in those circumstances, whereas the Applicant for
registration of the trade mark argues
the contrary.
[9]
Section 29(1
)(a) is clear that the Registrar shall register the trade mark where
the application has not been opposed and the time for notice
of
opposition has expired. If no more is said, the single enquiry is
whether opposition has been lodged within the time prescribed
or not.
If it hasn’t so been lodged, the Registrar is obliged to
register the trade mark. The crisp question is whether the
provisions
of
Section 45(3)
of the Act read with
Regulation 52(1)
and (3)
provides authority for the proposition that a late objection can be
condoned lawfully by the Registrar of Trade Marks.
In my view the
answer to that question is negative, for the reasons which appear
below.
[10]
When
Section 29(1
)(a) is read together with
Regulation 52(1)
it is
clear that an Objeector to the registration of a trade mark has to
request the Registrar not to register the trade mark when
requested
to do so before the expiry of the term within which opposition can be
lodged. That is not a case of condonation, the
Registrar has no
option but to refrain from issuing a certificate of registration for
a period of a further three months from the
date of expiry of the
term within which objection could be lodged. It is an extension of
time. That is authorized by
Section 45(3)
read with
Regulation 52(1).
That extension of time can be done, in terms of
Section 45(3)
unless
otherwise expressly provided
.
[My emphasis].
Regulation 52(1)
expressly provides that the extended
time of three months during which the Registrar shall not register
the trade mark can be granted
if such request has been made before
expiry of the opposition period as advertised. That is an express
provision.
[11] The power to
extend time limits is to be found in
Section 45(3)
, as I have
referred to above. That power, in relation to compliance with
Section
29(1)
of the Act, is dealt with specifically in
Regulation 52(1).
The
provisions of
Regulations 52(2)
and (3) are not, in my view,
authority for the proposition that the extension of the time limit
mentioned in
Section 29(1
)(a) can be lawfully entertained after the
expiry of the time for notice of opposition. Such an interpretation
would militate against
the clear provision of
Section 45(3)
read with
Regulation 52(1)
and
Section 29(1)(a).
I am driven to the conclusion
that
Regulation 52(2)
and (3) is no authority for the proposition
that the time limit for lodging of objection to the registration of a
trade mark is
capable of being extended after expiry of the term for
opposition as advertised. Those provisions relate to other time
limits mentioned
in the Act, and not the time limit within which to
lodge an objection to the registration of a trade mark.
Section 45(3)
also refers to such other matters, but excluding extension of the
time limit referred to in
Section 29(1
)(a). If that had not been so,
the Registrar could never register a trade mark when
Section 29(1
)(a) has been complied with, as, in terms of
Section 45(3)
read with
Regulation 52(3)
that registration could, at any time after
registration of the trade mark be overturned and opposed. That is
clearly an absurd
result and cannot have been the intention of the
legislator.
[12] It follows from
the aforegoing that, in my judgment, the time limit within which the
objectors can lawfully oppose the registration
of the trade mark, has
expired and cannot be extended at this stage. Consequently, I uphold
the objection of the Trade Mark Applicant
and the application for
condonation by the Objectors must be dismissed. The Objectors are
ordered to pay the costs of the Trade
Mark Applicant in these
proceedings.
LI VORSTER, AJ