MOBIL PETROLEUM CO. INC. AND ANOTHER v. THE DIRECTOR OF INTELLECTUAL PROPERTY

HCAL 19/2000

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

CONSTITUTIONAL AND ADMINISTRATIVE LAW LIST NO. 19 OF 2000

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J U D G M E N T

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1. The Applicants in this matter are corporate members of an international oil conglomerate which has for many years been identified by the trade name of 'Mobil'. The Applicants seek an order of certiorari to quash a decision of the Registrar of Trade Marks ('the Registrar') in terms of which the Registrar declined to grant to the Applicants an extension of time within which to file a notice of opposition to an application made by a corporation called Deutsche Telekom AG to register a trade mark described in the Gazette as being: '.T...Mobil.'.

2. In broad terms, Mr Shipp, who appears for the Applicants, has argued that the Registrar was wrong in law to follow the directions laid down by Kaplan J in the 1994 case of Bristol-Myers Squibb Company v. The Director of Intellectual Property in her capacity as the Registrar of Trade Marks [1995] 1 HKC 171 ('Bristol-Myers'). In that judgment, Kaplan J directed that, in considering whether or not to grant an extension of time, the Registrar must first be satisfied that a satisfactory or adequate explanation for the delay has been given. Only when satisfied as to that primary matter may the Registrar then proceed to exercise the general discretion given to him in terms of Rule 91 of the Trade Marks Rules.

3. Mr Shipp has submitted that Bristol-Myers was decided without the benefit of full argument, only one side being represented, and was decided per incuriam. He has argued that the learned judge was wrong to find that the principles governing the granting of extensions under Ord. 3 r. 5 of the Rules of the High Court should apply to the broad and unfettered discretion given to the Registrar in terms of Rule 91 of the Trade Marks Rules. As I understand him, he has further argued that, in any event, the directions laid down in Bristol-Myers are no longer correct in law, the law today being consistent with the wording of Rule 91 of the Trade Marks Rules; namely, that the Registrar, in exercising his discretion, must consider all relevant matters together, the provision of a satisfactory or adequate explanation for the delay being only one of those matters.

4. In the event that I am against him on his contention that the Registrar was wrong in law, Mr Shipp has argued that the decision of the Registrar was in any event 'Wednesbury unreasonable' in that it was a decision that was so unreasonable that no reasonable authority could ever have come to it.

A consideration of the legal framework within which the decision was made.

5. An application to register a trade mark must first be scrutinised by the Registrar. If the Registrar accepts the application, it must then be advertised in the Gazette. In this regard, section 14 of the Trade Marks Ordinance, Chapter 43 ('the Ordinance'), directs:

" When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall require the applicant to advertise it, as accepted, in the prescribed manner. The advertisement shall set forth all conditions and limitations subject to which the application has been accepted..."

6. Persons who wish to oppose the registration of an advertised trade mark must file a notice of opposition with the Registrar. That notice must be in the prescribed manner; it must include a statement of the grounds of opposition and it must be lodged within a specified time. In this regard, section 15(1) and (2) of the Ordinance reads:

" (1) Any person may, within the prescribed time from the date of the advertisement of an application, give notice to the Registrar of opposition to the registration.

(2) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition."

7. Rule 23 of the Trade Mark Rules directs that a notice of opposition is to be filed with the Registrar 'within 2 months' of the advertisement appearing in the Gazette. The relevant portion of Rule 23 states:

" Any person may within 2 months from the date of any advertisement in the Gazette of an application for registration of a trade mark file in duplicate on Form TM-No. 6 notice of opposition to the registration; and the Registrar shall forthwith send the duplicate to the applicant."

8. If a person seeking to oppose the registration of a trade mark neglects to file his notice of opposition within the prescribed time, he may be deprived of the ability to actively oppose that application. For thereafter, in the absence of any such notice, the Registrar must register the trade mark unless the application has been accepted in error or the Chief Executive otherwise directs. Section 17(1) of the Ordinance reads:

" When an application for registration of a trade mark in Part A or in Part B of the register has been accepted and has not been opposed and the time for notice of opposition has expired ... the Registrar shall, unless the application has been accepted in error or unless the Chief Executive otherwise directs, register the trade mark in part A or part B, as the case may be, and the trade mark when registered shall be registered as of the date of the application for registration, and such date shall be deemed for the purposes of this Ordinance to be the date of registration."

9. However, the strict mandate of the time limits are ameliorated by vesting in the Registrar a discretion to grant extensions of time. This discretion, contained in Rule 91 of the Trade Mark Rules, states:

" If in any particular case the Registrar is satisfied that the circumstances are such as to justify an extension of the time for doing any act or taking any proceeding under these rules, not being a time expressly provided in the Ordinance or prescribed by rule 45(3) or 49(5), he may extend the time for so doing upon such terms as he may direct, and shall give notice thereof to other interested parties. The extension may be granted though the time has expired for doing the act or taking the proceeding in question."

10. The discretion, as worded, is a wide one; there are no stated restrictions. The Registrar must be satisfied in each case placed before him that 'the circumstances' are such as to justify an extension. The discretion is equally wide as to the terms of any extension, the Registrar being entitled to impose 'such terms' as he thinks fit.

A brief history.

11. In order to understand why the Applicants contend that the Registrar was either wrong in law in refusing to give them an extension or that the decision was 'Wednesbury unreasonable', it is necessary to understand something of the factual background.

On 19 June 1998, Deutsche Telekom AG ('Deutsche Telekom') gave notice in the Gazette of an application to register the trade mark 'T-Mobil' in respect of Class 36 services; namely, services connected with real estate brokerage and management. This notice was read by the solicitor representing the Applicants who sought instructions from them. On or about 18 August 1998, the Applicants instructed the solicitor to file a notice of opposition. In order to do so, however, it was necessary to obtain an extension of time from the Registrar. The Registrar agreed to grant an extension and a formal notice of opposition was filed on 16 November 1998. Thereafter matters proceeded towards a contested hearing.

12. Approximately eleven months later, on 7 May 1999, Deutsche Telekom AG gave notice in the Gazette of a further application: this time it was to register the trade mark 'T-Mobil' in respect of Class 37; namely, services connected with the installation and repair of telecommunications equipment. This noticed too was read by the solicitor representing the Applicants who, on or about 5 July 1999, received instructions from the Applicants to file a notice of opposition. In order to do so, it was again necessary to obtain an extension of time. The agents representing Deutsche Telekom had no objection and the extension was granted by the Registrar.

13. On or about 16 July 1999, when re-checking the advertisement of Deutsche Telekom appearing in the Gazette of 7 May 1999, the solicitor representing the Applicants saw on the opposite page of the same issue of the Gazette that Deutsche Telekom had inserted another notice - one that the solicitor had earlier failed to notice - this time for the trade mark '.T...Mobil.' but in respect also of Class 37 services; namely, services connected with the installation and repair of telecommunications equipment. The solicitor immediately filed with the Registrar an application for an extension of time within which to file a notice of opposition. A letter was also sent to the agents representing Deutsche Telekom seeking their consent to an extension.

14. On 29 July 1999, the Registrar informed the Applicants' solicitor that an extension of time had been refused. A little later, the agents representing Deutsche Telekom registered their refusal to consent. The Applicants had the right to call for a hearing and this took place on 15 October 1999 before the Registrar's authorised officer, Ms Lavinia Chang. I am told that at that hearing the solicitor representing the Applicants said that the notice of opposition was ready for filing.

15. By letter dated 21 October 1999, the Ms Chang refused the application for an extension of time, awarding costs to Deutsche Telekom.

Reasons for the refusal.

16. In the letter of 21 October 1999, Ms Chang set out in summary her reasons for refusing to exercise her discretion in terms of Rule 91:

" At the hearing the [Applicants'] solicitor admitted that the delay was the result of an oversight on the part of her firm, and submitted that the [Applicants] should not be penalised for the mistake. The "oversight" was in overlooking the advertisement of the Applicant's mark... The [solicitor] submitted, inter alia, that no prejudice would be caused to [Deutsche Telekom], should I decide in favour of granting an extension, since [it] is facing an opposition from the very same opponent in respect of a nearly identical mark in respect of identical services.

In resisting the request for time, [Deutsche Telekom] referred me to relevant circulars issued by the Registrar as well as to Bristol-Myers Squibb Company v. The Director of Intellectual Property in her capacity as the Registrar of Trade Marks. It was submitted that the onus was upon the [Applicants] to show satisfactory reasons as to why the time period for lodging a notice of opposition was not met."

17. Ms Chang continued:

" It is not in every instance of overstepping the time limit, however short, that one should be penalised by the loss of the action; for each case has to be decided on its own facts and merits. However, as authority binding upon the Registrar, Kaplan J has made it quite plain in Bristol-Myers that the extension seeker must, as a first hurdle, provide a satisfactory explanation for not complying with the time limit. It is only when his first hurdle is overcome that the Registrar may consider if the circumstances are such as to justify the grant of an extension of time. It is then that the question of prejudice comes into the balance.

Having considered the parties' submissions, the relevant circumstances of this application and the case law on the point, I could not see that a mistake made by the [Applicants'] solicitors, namely, an oversight in spotting the advertisement ..., could amount to a satisfactory explanation for the delay ..." [my emphasis]

18. In her far fuller reasons dated 29 December 1999, Ms Chang emphasised again that she was constrained by the decision in Bristol-Myers not to consider all relevant circumstances in exercising her discretion but first, before the exercise of her discretion, to be satisfied that a 'satisfactory or adequate' explanation for the delay had been given. Only if so satisfied was she then to proceed to exercise her broad discretion under Rule 91. In this regard, inter alia, she said:

" I do not think that a nine-day delay is substantial. In fact, given good reasons, it is probably excusable. However, I find it difficult to treat the negligence of the Intended Opponents' solicitors as being "excusable" or amounting to a "satisfactory" explanation. On the contrary, the circumstances were such as to suggest that the [Applicants'] solicitors had displayed quite inexcusable ineptitude. It is somewhat unfortunate that the lapse in this case was nine days. However, applying the test in Bristol-Myers, as I am obliged to do, the fact remains that the [Applicants] have not discharged the first burden, namely, the need to provide a satisfactory explanation."

19. Ms Chang was, however, aware of the fact that in recent years there had been a line of authorities in England and Wales which, as she expressed it, had suggested a 'more liberal approach to the question of extension of time', a line of authorities that directed that, in exercising a discretion under Ord. 3 r. 5 of the Rules of the Supreme Court, all relevant circumstances must be taken into account. It is clear that she was not persuaded by these authorities.

The 'Bristol-Myers' judgment.

20. As earlier indicated, it is the Applicants' contention that the Registrar was wrong in law to follow the directions laid down by Kaplan J in Bristol-Myers.

21. The facts of Bristol-Myers are not complex. The Registrar had agreed to an extension of time under Rule 91 even though it was apparent that the party applying for the extension, aside from submitting a chronology of events, had not submitted anything approaching 'a satisfactory or adequate explanation' for its delay. The Registrar's decision, it appears, was based substantially on the finding that making an application for extension 'two months and twenty four days' out of time did not amount to substantial delay. Bristol-Myers Squibb Company, which was seeking to register 'Taxol' as a trade mark, sought to review the Registrar's decision as being wrong in law or 'Wednesbury unreasonable'.

22. At the beginning of his judgment, Kaplan J noted that neither the Registrar nor the party which had obtained the extension had elected to take part in the hearing. He was therefore only able to hear argument on behalf of Bristol-Myers Squibb Company.

23. The headnotes succinctly set out the learned judge's findings. They read:

" (1) Applications to extend time under r 91 of the Trade Marks Rules (Cap 43) involved similar considerations to those governing extensions of time under O. 3 r. 5 of the Rules of Supreme Court.

(2) It was incumbent upon the seeker of an extension to first satisfy the respondent that there was an explanation as to why the two-month time limit had not been complied with. Atwood v Chichester (1878) 3 QBD 722, Revici v Prentice Hall Inc [1969] 1 All ER 772 and Regalbourne v East Lindsey District Council [1992] COD 493; [1993] COD 297 applied.

(3) The decision of the respondent was wrong in law because she did not direct herself properly on the law. She should have directed herself that, before exercising her discretion, a satisfactory or adequate explanation for the delay had to be given. Had she done this, she would have found that there was no satisfactory explanation put forward and that, in those circumstances, it could not have been a proper exercise of discretion to extend time."

24. As to the manner in which the Registrar should approach the exercise of the discretion vested in him under Rule 91 of the Trade Marks Rules, the judge held that it was:

"incumbent upon the extension seeker to first satisfy the Registrar that there was an explanation as to why the generous two month limit had not been complied with." [my emphasis]

25. He concluded:

" I am quite satisfied that the decision was wrong in law because the decision maker [the Registrar] did not direct herself properly on the law. She should have directed herself that before exercising her discretion a satisfactory or adequate explanation for the delay had to be given. Had she done this, she would have found that there was no satisfactory explanation put forward and that in those circumstances, it could not have been a proper exercise of discretion to extend time." [my emphasis]

26. In light of this judgment, the Registrar issued a circular dated 30 December 1994 for the guidance of the profession. That circular read (in part) as follows:

" Following the judgment of Kaplan J in [Bristol-Myers] dated 22 November 1994 the Registrar will, when considering the exercise of his discretion under Trade Marks Rule 91 to grant or refuse a request for an extension of time, be guided by the principles laid down in Atwood v Chichester (1878) 3 QBD 722 as amplified by Revici v Prentice Hall (1969) 1 AER 722 and Regalbourne Ltd v East Lindsey District Council (1992) COD 493. Those seeking the Registrar's indulgence to grant an extension of time must provide the Registrar with a satisfactory explanation as to why the relevant time limit was not met. Delay is not adequately explained by merely provided an account of the time scale involved."

27. I am told that the guidance provided by that circular remained current when the Registrar made the decision not to grant an extension of time to the Applicants now before me.

The applicability of considerations governing extensions of time under Ord. 3 r. 5.

28. Mr Shipp has argued that the Ordinance and the rules made under it have established a statutory scheme for trade mark registrations. Echoing the words of Litton J (as he then was) in Mita Kogyo Kabushiki Kaisha v. Mitac Inc MP No. 2766 of 1992, he has said that 'it would be wholly consistent with good reason to suppose that a comprehensive code was intended' by the legislation. That may well be the case but I fail to see why, in assisting rationally to interpret the provisions of that comprehensive code, assistance may not be obtained, where relevant, from other legislation or from principles to be found in the Common Law. I can find nothing in the authority to which I have just referred, which Mr Shipp relied upon, to suggest otherwise.

29. By way of general principle, how is the interpretation of Rule 91 to be approached? A court is bound, of course, by the clear, unqualified language. It is not appropriate in such circumstances to attempt to define it further by means of judicial interpretation. But Rule 91, while clear in its language, vests a discretion in the Registrar, a discretion that must be exercised judicially. But how best is it to be exercised 'judicially'? Surely in answer to that question guidance can be obtained from other provisions in our law where judicial discretion in respect of procedural matters is exercised.

30. Ord. 3 r. 5 of the Rules of the High Court provides an equally broad discretion:

" (1) The Court may, on such terms as it thinks just, by order extend or abridge the period within which a person is required or authorized by these rules, or by any judgment, order or direction, to do any act in any proceedings.

(2) The Court may extend any such period as is referred to in paragraph (1) although the application for extension is not made until after the expiration of that period."

31. But judicial guidance has nevertheless been obtained as to how best that discretion is to be exercised. I can see no reason why the benefit of that guidance cannot, where appropriate, be used to assist the Registrar in the exercise of his discretion under the trade marks legislation. I must, therefore, reject Mr Shipp's submission that the principles governing the granting of extensions under Ord. 3 r. 5 should not in any way apply to the discretion vested in the Registrar under Rule 91 of the Trade Marks Rules.

The 'per incuriam' argument.

32. Mr Shipp has argued that Bristol-Myers was decided per incuriam and accordingly was never binding on the Registrar. I disagree.

33. Halsbury's Laws of England 4th ed. Vol. 26, para. 578 defines the phrase per incuriam in the following terms (in respect of the Court of Appeal):

" A decision is given per incuriam when the court has acted in ignorance of a previous decision of its own or of a court of co-ordinate jurisdiction which covered the case before it, in which case it must decide which case to follow; or when it has acted in ignorance of a House of Lords decision, in which case it must follow that decision; or when the decision is given in ignorance of the terms of a statute or rule having statutory force. A decision should not be treated as given per incuriam, however, simply because of a deficiency of parties, or because the court had not the benefit of the best argument, and, as a general rule, the only cases in which decisions should be held to be given per incuriam are those given in ignorance of some inconsistent statute or binding authority."

34. The fact, therefore, that only one party was represented before Kaplan J did not of itself mean that his judgment was given per incuriam nor did the possibility that, as a result of a deficiency of representation, the judge may not have had the benefit of the best argument from parties in opposition.

35. In my opinion, Mr Shipp has been unable to place any authority before me of which Kaplan J was ignorant but which, if he had known of it, would either have been binding upon him or, coming from a court of co-ordinate jurisdiction, would have had great persuasive power.

36. In light of this, how should I approach the judgment? There is no common law rule by which one court is bound to abide by the decision of another court of co-ordinate jurisdiction. The practice, however, is that a judge of first instance will, as a matter of judicial comity, usually follow the decision of another judge of first instance unless he is convinced that the judgment was wrong (see, in this regard, Halsbury's Laws of England 4th ed. Vol. 26, para. 580).

37. I cannot say that the judgment, when made in late 1994, was wrong. For reasons, to which I will refer later in this judgment, I am satisfied that when Kaplan J gave his judgment the relevant law was not settled. The question, however, is whether the law has since been settled and, if so, what was that law at the time the decision now under challenge was made?

A consideration of recent authorities.

38. Until the coming into force of the new Civil Procedure Rules, Ord. 3 r. 5 of Rules of the Supreme Court bore the same wording as our own Ord. 3 r. 5 supra. It is apparent, however, that two conflicting lines of authority developed as to the correct principles to be employed in exercising the court's discretion under the Rule. It is a conflict which does not appear to have been settled until late 1996, two years after the judgment in Bristol-Myers.

39. One side of the conflict may, for convenience, be described as the approach adopted in Revici v. Prentice Hall Incorporated [1969] 1 WLR 157 and Ratnam v. Cumarasamy [1965] 1 WLR 8 which is the approach adopted by Kaplan J.

40. In Ratnam v. Cumarasamy, Lord Guest said (at page 12):

" The rules of court must prima facie be obeyed, and in order to justify a court in extending the time during which some step in procedure requires to be taken there must be some material upon which the court can exercise its discretion. If the law were otherwise, a party in breach would have an unqualified right to an extension of time which would defeat the purpose of the rules, which is to provide a time table for the conduct of litigation. The only material before the Court of Appeal was the affidavit of the appellant. The grounds there stated were that he did not instruct his solicitor until a day before the record of appeal was due to be lodged and that his reason for this delay was that he hoped for a compromise. Their Lordships are satisfied that the Court of Appeal were entitled to take the view that this did not constitute material upon which they could exercise their discretion in favour of the appellant. In these circumstances their Lordships find it impossible to say that the discretion of the Court of Appeal was exercised upon any wrong principle."

41. In Revici v. Prentice Hall Incorporated, the dicta of Lord Guest was cited with approval, Edmund Davies LJ saying (at page 160):

" The real question raised by this appeal is simply this: when a party has exceeded to a substantial degree the time limit set by the Rules of the Supreme Court within which an interlocutory step has to be taken, can it be said that he is entitled to have his time extended merely on undertaking to pay any costs occasioned by his delay, so that a judge who nevertheless refuses to extend his time must necessarily be regarded as having exercised his discretion wrongly? The very first ground of the notice of appeal herein submits (in effect) that that question calls for an affirmative answer, certainly in cases where it is not shown that the other side have suffered irreparable damage as a result of the delay. I disagree. On the contrary, the Rules of the Supreme Court are there to be observed; and if there is non-compliance (other than of a minimal kind), that is something which has to be explained away. Prima facie, if no excuse is offered, no indulgence should be granted.... That, as it seems to me, is the position here. Substantial delay has occurred, and simply no explanation for it has even now, in my judgment, been proffered."

42. It was from this line of authorities that Kaplan J drew the principle that an extension seeker should first provide a satisfactory or adequate explanation for its delay otherwise there would be no acceptable explanation upon which an indulgence could be granted.

43. The other side of the conflict may, for convenience, be described as the approach adopted in Costellow v. Somerset County Council [1993] 1 WLR 256 and Mortgage Corparation Ltd v. Sandoes, the Times, 27 December 1996.

44. In Costellow v. Somerset County Council, Sir Thomas Bingham MR described the nature of the conflict in the following terms (at page 263-264):

"We are told that there is some uncertainty among practitioners and judges as to the appropriate practice in situations such as this. It is plainly desirable that we should give such guidance as we can. As so often happens, this problem arises at the intersection of two principles, each in itself salutary. The first principle is that the rules of court and associated rules of practice, devised in the public interest to promote the expeditious dispatch of litigation, must be observed. The prescribed time limits are not targets to be aimed at or expressions of pious hope but requirements to be met. This principle is reflected in a series of rules giving the court a discretion to dismiss on failure to comply with a time limit: Ord. 19, r. 1; Ord. 24, r. 16(1); Ord. 25, r. 1(4) and (5); Ord. 28, r. 10(1) and Ord. 34, r. 2(2) are examples. This principle is also reflected in the court's inherent jurisdiction to dismiss for want of prosecution.

"The second principle is that a plaintiff should not in the ordinary way be denied an adjudication of his claim on its merits because of procedural default, unless the default causes prejudice to his opponent for which an award of costs cannot compensate. This principle is reflected in the general discretion to extend time conferred by Ord. 3 r. 5, a discretion to be exercised in accordance with the requirements of justice in the particular case. It is a principle also reflected in the liberal approach generally adopted in relation to the amendment of pleadings.

"Neither of these principles is absolute. If the first principle were rigidly enforced, procedural default would lead to dismissal of actions without any consideration of whether the plaintiff's default had caused prejudice to the defendant. But the court's practice has been to treat the existence of such prejudice as a crucial, and often a decisive, matter. If the second principle were followed without exception, a well-to-do plaintiff willing and able to meet orders for costs made against him could flout the rules with impunity, confident that he would suffer no penalty unless or until the defendant could demonstrate prejudice. This would circumscribe the very general discretion conferred by Ord. 3 r. 5 and would indeed involve a substantial rewriting of the rule."

45. As to the appropriate principles to be applied, Sir Thomas Bingham said:

" The resolution of problems such as the present cannot in my view be governed by a single universally applicable rule of thumb. A rigid, mechanistic approach is inappropriate. Where, as here, the defendant seeks to dismiss and the plaintiff seeks an extension of time, there can be no general rule that the plaintiff's application should be heard first, with dismissal of his action as an inevitable consequence if he fails to show a good reason for his procedural default."

46. Concerning the approach to applications under Ord.3 r. 5, he continued:

"Ord. 3 r. 5 should not in most cases be very different. Save in special cases or exceptional circumstances, it can rarely be appropriate, on an overall assessment of what justice requires, to deny the plaintiff an extension (where the denial will stifle his action) because of a procedural default which, even if unjustifiable, has caused the defendant no prejudice for which he cannot be compensated by an award of costs. In short, an application under Ord. 3 r. 5 should ordinarily be granted where the overall justice of the case requires that the action be allowed to proceed."

47. In summary, as I understand it, Costellow did not approve a 'mechanistic' approach in which, before the exercise of discretion, there must first be an adequate explanation for the delay placed before the court. To the contrary, all relevant matters were to be considered by the court in the exercise of its discretion so that the 'overall justice' of the case would be met.

48. The Costellow approach was followed in Mortgage Corporation Ltd v. Sandoes where the Court of Appeal (consisting of Lord Justice Millett, Lord Justice Potter and Sir Christopher Slade) are reported to have said that:

" The court was acutely aware of the growing jurisprudence in relation to the failure to observe procedural requirements. There was a need for clarification as to the likely approach of the court in the future to non-compliance with the requirements as to time contained in the rules or directions of the court. What his Lordship said now went beyond the exchange of witness statements or expert reports; it was intended to be of general import."

49. The court then made reference to guidelines approved by Lord Woolf MR and Sir Richard Scott, Vice-Chancellor, and adopted them as guidance to the future approach which litigants could expect courts to adopt when there had been a failure to adhere to time limits contained in the rules and an extension of time was sought. There were ten such guidelines which, in my opinion, bear repeating in full:

"1 Time requirements laid down by the rules and directions given by the court were not merely targets to be attempted; they were rules to be observed.

2 At the same time the overriding principle was that justice must be done.

3 Litigants were entitled to have their cases resolved with reasonable expedition. The non-compliance with time limits could cause prejudice to one or more of the parties to the litigation.

4 In addition the vacation or adjournment of the date of trial prejudiced other litigants and disrupted the administration of justice.

5 Extensions of time which involved the vacation or adjournment of trial dates should therefore be granted only as a last resort.

6 Where time limits had not been complied with the parties should cooperate in reaching an agreement as to new time limits which would not involve the date of trial being postponed.

7 If they reached such an agreement they could ordinarily expect the court to give effect to that agreement at the trial and it was not necessary to make a separate application solely for that purpose.

8 The court would not look with favour on a party who sought only to take tactical advantage from the failure of another party to comply with time limits.

9 In the absence of an agreement as to a new timetable, an application should be made promptly to the court for directions.

10 In considering whether to grant an extension of time to a party who was in default, the court would look at all the circumstances of the case including the considerations identified above."

50. Guideline number 10 is plain in its meaning: in exercising its discretion in respect of an application for an extension of time, the court will look 'at all the circumstances of the case'.

51. The Court of Appeal in the later decision of Finnegan v. Parkside Health Authority [1998] 1 WLR 411 affirmed the principles laid down in the Mortgage Corporation decision. Hirst LJ (at page 420 and 421) said:

" If there was any doubt as to the strength and breadth of guidance given by Costellow's case in the general application of R.S.C., Ord. 3, r. 5, that in my judgment was finally laid to rest to Mortgage Corporation Ltd. v. Sandoes, which follows precisely the same line of principle, and again expressly rejects the notion that the absence of a good reason is always and in itself sufficient to justify the court in refusing to exercise its discretion; that case moreover lays down clear guidelines requiring the court to look at all the circumstances, and to recognise the overriding principle that justice must be done."

52. In analysing the correct principle to be adopted in exercising a discretion under Ord. 3 r. 5, Hirst LJ said:

" In my judgment the starting point is R.S.C., Ord. 3, r. 5 itself, which explicitly confers the widest measure of discretion in applications for extension of time, and draws no distinction whatsoever between various classes of cases. Costellow v. Somerset County Council seems to me fully in line with that philosophy, was expressed to be a guideline case, and, I would add, drew no rigid distinctions ... I do not acept that the last paragraph in Sir Thomas Bingham M.R.'s judgment did any more than point out that in special cases or exceptional circumstances the court must, as is obvious, apply special treatment. For present purposes it is extremely important to note that Sir Thomas Bingham M.R. expressly disapproved of a rigid mechanistic approach, and rejected the contention that the application for an extension should be heard first, and that dismissal of the action is an inevitable result if the applicant fails to show good reason for his procedural default."

The present law.

53. While there may, at the time when Kaplan J gave his judgment in Bristol-Myers, have been two differing approaches, I am satisfied that with the judgments in Mortgage Corporation and Finnegan the law is now settled as to the correct principle to be adopted in the exercise of the court's discretion under Ord. 3 r. 5. It is not the principle adopted by Kaplan J; namely, that before any discretion is exercised, there must first be an acceptable reason for any delay. It is instead the principle that all matters, including the adequacy of any reason for delay, must be considered, the one to be weighed against the other, in the exercise of the court's discretion.

54. I agree with the observation of Hirst LJ that the wording of Ord. 3 r. 5 confers the widest measure of discretion. I would add that so too does the wording of Rule 91 of the Trade Marks Rules and it is, in my judgment, a discretion which must now in law, be exercised in accordance with the principles laid down in Mortgage Corporation and Finnegan.

55. Mr Liao, who appears for the Respondent, has argued that even if Bristol-Myers was (or is now) wrong in law, it was not possible for the Registrar to refuse to be bound by it. Accordingly, while this judgment may render future guidance to the Registrar, it cannot be said that the Registrar's decision making process was in any way irregular.

56. But, with respect, persons in the position of the Registrar must not err in law and this Court has asserted a general supervisory role in correcting mistakes of law. How else is consistency to be assured? As Lord Diplock said in Council of Civil Service Unions v. Minister for the Civil Service [1985] AC 374 (at 410):

"By 'illegality' as a ground for judicial review I mean that the decision-maker must understand correctly the law that regulates his decision-making power and must give effect to it. Whether he has or not is par excellence a justiciable question to be decided, in the event of dispute, by those persons, the judges, by whom the judicial power of the state is exercisable"

57. In short, while Ms Chang may have felt constrained by the dicta in Bristol-Myers whether she acted according to law in making her decision, has always remained a justiciable question to be decided by this court.

58. Mr Liao has further pointed to a number of judgments concerning tribunals and trade mark offices, the suggestion being that principles in accordance with Bristol-Myers are regularly employed by such tribunals and offices. I regret, however, that I have been unable to receive any assistance from these judgments. Each was clearly decided on its own facts and no clear principle as advocated has emerged from them.

The materiality of the error in law.

59. The mere existence of a mistake of law does not per se vitiate a decision. What must be shown is an error in the actual making of the decision which has affected the decision itself. I believe that has been demonstrated.

60. Quite clearly, Ms Chang believed that she was obliged, before exercising any discretion, to consider only the adequacy of the explanation put forward on behalf of the Applicants to account for their delay. She reached her decision on this basis. But there were a number of other matters which, if she had placed them into the balance too, may well have influenced her decision. Ms Chang accepted that the Applicants' delay was short. There was evidence that the Applicants had objected to other applications made by Deutsche Telekom, indeed one of them appeared in the same issue of the Gazette. Matters such as this would have had some bearing on the question of prejudice, both to the Applicants and Deutsche Telekom.

61. In all the circumstances and for the reasons given above, despite the diligence with which Ms Chang carried out her duty, I am satisfied that the principle applied by her in the making of her decision was wrong in law. As such it must be set aside and the matter referred back to the Registrar for a decision in accordance with the law as I have endeavoured to define it in this judgment.

62. In the light of my finding as to the law, there is no need for me to go as to decide whether the decision was unreasonable in the Wednesbury sense.

63. My orders, therefore, are that there will be an order of certiorari quashing the decision of the Registrar and an order of mandamus remitting the matter back to the Registrar for reconsideration. I have not heard from the parties on the matter of costs. Provisionally, it would appear that costs should follow the event. There will, therefore, be an order nisi awarding costs to the Applicants, to be taxed if not agreed.