Tuesday, 10 June 2014

RSA: Condonation of late TM opposition rejected

To those not interested in South African trade mark opposition procedure, I say move on quickly. This piece is sure to be just about the most boring thing you’ve ever read.  To those who are interested, you may want to move on anyway, given that this will only give you something else to worry about!

The Registrar of Trade Marks referred this opposition matter to the High Court in Pretoria, as the Registrar has been doing of late (reported here).  Essentially, the opponent had lodged its notice of opposition more than a month after the close of the opposition period, but applied for condonation of the late lodging.  The Court rejected the condonation application, finding that condonation of late filed oppositions is not competent in terms of local legislation.  Cue terror by trade mark attorneys throughout the land!

The Court considered that section 45(3) of the Trade Marks Act permits the Registrar to extend any time period on application by the relevant person, whether that application is filed before or after expiration of the period, unless otherwise expressly provided

The Court then turned to section 29(1)(a), which requires the Registrar to register a mark when no opposition has been filed and the opposition period has closed.  It was reasoned that this section is an express provision, and, in terms of the underlined proviso to section 45(3), the relevant period cannot be extended as a result.

The Court did consider Regulations 52(2) and (3), which provide that the Registrar may, on application, extend any time period prescribed in the Regulations, even though such application is not made until after the expiry of the relevant term.  However, the Court reasoned that those provisions relate to other time limits besides the time limit to oppose a mark, given that, if condonation of a late filed opposition were to be permitted, the Registrar could never register a mark when the opposition period closes as, at any time, the registration could be overturned and opposed.

Two counterpoints could be raised here.  Firstly, it is not clear whether the proviso to section 45(3) – “unless otherwise expressly provided” – is met by section 29(1)(a).  That latter section does not expressly state that the opposition period cannot be extended after the fact.  Secondly, the general structure of Regulation 52 seems to suggest that Regulations 52(2) and (3) were intended to apply to extensions of the opposition period (which are covered in Regulation 52(1)).

However, it is to be noted that the court adopted a similar line of reasoning to that previously adopted by the same court in Weekly Property Trader v Erasmus 2002 BIP 303 (T).  That case concerned a failure to respond timeously to an office action issued by the Registry, which, in terms of a specific provision of the Act, leads to the abandonment of the application.  The court accepted that that specific abandonment provision constituted an express provision for the purposes of section 45(3), i.e., an express provision excluding the Registrar’s general discretion to extend time periods.

All in all, not very exhilarating stuff, but disregard this at your peril!

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