MITA KOGYO KABUSHIKI KAISHA v. MITAC INC

Headnote

[Publication of this judgment given in chambers is authorized, as it concerns a matter of general importance.]

    Time limit for appeals under s.79(1) Trade Marks Ordinance - Court has no power to extend time - s.79(1) not impliedly repealed by section 14(1) Supreme Court Ordinance - 6 weeks in Order 59 r.4(1)(c) inapplicable.

----------------------

J U D G M E N T

----------------------

Litton, J.A.:

1. What I have before me is a summons taken out by company called Mita Kogyo Kabushiki Kaisha ("Mita") for leave to file a notice of appeal out of time. The summons is made inter partes, contrary to the provisions of Order 59 r.14(2)(b). The respondent to this summons Mitac Inc. has appeared before me by leading counsel Mr. Kotewall, Q.C. No point was taken concerning the breach of the rules and the matter has been fully argued as if the court had directed that it be heard inter partes in the first place. I am much indebted to counsel for their arguments in this case.

2. Mita wishes to appeal against the judgment of Mayo J. given on 6 July 1992. By his judgment Mayo J. upheld the decision of the Registrar of Trade Marks who allowed Mitac Inc.'s application for the Mitac mark to be registered as a trade mark in respect of "disc drives for computers, computers, electronic components for use with computers, parts and fittings included in Class 9". Mita the opponent is the registered owner of the Mita trade mark B90 of 1987 registered in respect of "electrostatic copy machines, photocopying machines, diazo copying machines, and other copying machines".

History

3. The history of this matter goes back to November 1983 when Mitac Inc. first applied to register the Mitac trade mark. After the application was advertised Mita gave notice of opposition, but not until May 1985 after repeated applications to extend the time for lodging its notice of opposition. Eventually in November 1989 Mita's opposition was heard by the Registrar who held against the opponent and directed that the Mitac mark be entered in Class 9 of the register. Mita wanted to appeal to the High Court against the Registrar's decision but failed to lodge the notice of appeal in time. Eventually an extension of time was granted and the appeal came before Mayo J. in July this year.

Section 79(1) of the Trade Marks Ordinance

4. Section 79(1) provides "(1) Every order of the court shall be subject to appeal to the Court of Appeal. The appeal shall be commenced within 21 days from the time when the decision appealed against is pronounced or made." This provision has been in the statute book for a long time. Prior to 1975, when the new Supreme Court Ordinance No. 92 of 1975 was enacted and the Court of Appeal was first established in Hong Kong, section 79(1) of the Trade Marks Ordinance gave a dissatisfied party the right to appeal to the Full Court. By s.59(a) of the Supreme Court Ordinance No. 92/75 the reference to "Full Court" was substituted by a reference to the Court of Appeal. That is how the matter stands today.

5. If section 79(1) is now the only governing provision, time for appealing against Mayo J.'s judgment expired on 27 July 1992.

Events subsequent to Mayo J.'s Judgment

6. On 10 July 1992 the solicitors for Mita wrote to the Trade Mark Registry copying their letter to Mitac Inc. 's solicitors and said:

"You will have received a copy of the judgment of Mayo J. in the above matter. At this stage we anticipate that we will receive instructions to appeal against this decision. Accordingly and as was done following the decision of Mr. Fox for the Registrar of trade marks we would ask that the Registrar takes no steps to register the applicant's mark pending the outcome of the appeal. We understand the applicant had no opposition to this course of action. Please confirm that the applicant's mark would not be registered pending the appeal."

On 24 July 1992 the registry replied as follows:

"I refer to your letter of 10th July 1992 copied to (Mitac Inc's solicitors). Since the period within which to make an appeal to the Court of Appeal is 28 days from the date of judgment, no action will be taken by the registry to register this mark during the period up to 6 August 1992. If you wish the registry to continue its stance of not registering the mark after 6 August 1992 1 should be grateful if before that date you could please send me copies of court documents proving that either the appeal has been lodged or that the time period for appeal has been extended."

The solicitors replied three days later on 27 July 1992 and said

"we refer to your letter of 24 July 1992. Unfortunately we do not agree that the time for appealing referred to your letter Order 59 r.4 of the Rules of the Supreme Court provides that the time for appealing in this case is 42 days from the date of judgment or order was issued Accordingly the day by which the opponent must lodge his notice of appeal is 25 August 1992. Please confirm that our understanding is correct and that the registry will not take any action to register the Mitac mark 'until at least 25 August 1992."

Finally by letter of 3 August 1992 the registry replied as follows:

"I refer to your letter of 27 July 1992. You are correct in your understanding that Order 59 r.4 of the Rules of the Supreme Court provides that the time for appealing is 6 weeks from the date the judgment or Order was issued. In this case the Order was issued on 14 July and therefore the date. by which the opponent must lodge notice of appeal is 25 August 1992.' I confirm that the registry would not register the Mitac mark until after 25 August 1992."

7. On Monday 24 August 1992 the notice of appeal in this case was lodged in the Supreme Court Registry but was rejected as being out of time.

Present Application

8. When Mr. Rogers Q.C. appeared before me or. Mita's summons, his first submission was that the notice of appeal lodged on 24 August 1992 was in fact within time; that the Supreme Court registry was in error in refusing to allow it to be filed; that the only indulgence now needed was for an extension of time to correct the registry's error. The submission is simply this.

(1)     Mita's opposition to the Mitac trade mark is a. "civil matter" within the meaning of that expression in the Supreme Court Ordinance Cap. 4.

(2)     Mayo J.'s order upholding the decision of the Registrar is an "order of the High Court in a civil matter". Hence an appeal to the Court of Appeal lies as of right under the provisions of s.14(1) of Cap. 4.

s.14(1) says:

"Subject to ss.(3) an appeal shall lie as of right to the Court of Appeal from every judgment or order of the High Court in any civil cause or matter".

None of the exceptions in ss.3 are relevant to this case.

(3)     It must follow that the time limit for such an appeal is governed by the Rules of the Supreme Court made by the Rules Committee constituted under s.55 of Cap. 4, since such rules regulate the "procedure and the practice to be followed in the Supreme Court in all causes and matters whatsoever".

(4)     The time prescribed by Order 59 r.4(1)(c) for appeal in this case is 6 weeks - which had not expired on 24 August 1992 when the notice of appeal was lodged.

(5)     Section 79(1) of the Trade Marks Ordinance provides a separate avenue of appeal from decisions of the High Court to the Court of Appeal. A party is not bound to use this process and is entitled as of right to avail himself of the appellate process under the Supreme Court Ordinance.

Can Order 59 r.4(1)(c) override the time limit in s.79(1) of the Trade Marks Ordinance?

9. Before I deal with this question it would be helpful to recall that under s.28 of the old Supreme Court ordinance appeals to the Full Court were extremely limited. Section 28 said:

"There shall be an appeal as of right from every decision of one of the judges alone on the trial of any action or other proceedings and every appeal from such decision .... shall be heard before the Full Court."

There have been a number of decisions concerning the proper construction of that section. For instance, Chan Wing On (No. 2) v. Director of Public Works [1965] HKLR 192 where it was held that such right of appeal to the Full Court would not extend to a decision of a judge sitting in an appellate capacity. Thus if Mayo J. had been sitting prior to 20 February 1976, before the new Supreme Court Ordinance had come into effect, on appeal against the decision of the Trade Marks Registrar, then the only avenue of appeal to the Full Court available to the dissatisfied party would have been under s.79(1) of the Trade Marks Ordinance.

10. Is it right then to conclude that when the new Supreme Court Ordinance was passed, and the Court of Appeal established, the legislature intended that there should be an overriding appeal as of right from every judgment and order of the High Court, irrespective of whether at the time of its enactment there was in existence a statute which provided for a limited right of appeal to the Court of Appeal? Of course if the Rules Committee had provided that for appeals to the Court of Appeal from every order the High Court under the Trade Marks Ordinance the time limit shall be 21 days no practical problems of the kind I am now dealing with can arise. But of course that is not so.

11. Order 59 r.4(1)(c) says that an appellant shall have 6 weeks. When an existing statute prescribes a specific time limit for appeal then plainly in my view the Supreme Court Rules Committee exercising restricted powers of rule-making under s.55 of the Supreme Court Ordinance cannot override such statutory time limit. Nor can it be understood to have done so.

12. The Trade Marks Ordinance provides for a statutory scheme for the registration of trade marks. Section 78, which provides for appeals from the Registrar, gives power to the High Court to review the decisions of the Registrar. This is the sole source of the High Court's appellate jurisdiction in this regard. When it comes to a further appeal to the Court of Appeal from decisions of the High Court, could the legislature have intended that there should be two separate sources of jurisdiction : one under s.79(1) of the Trade Marks Ordinance and the other under s.14(1) of Cap. 4?

13. In my judgment the answer must be No. If it were otherwise it would have been a formula for chaos and the legislature cannot be taken to have so intended unless the words of the statute were crystal clear to that effect. So the only way in which Mr. Roger's argument can be right is to assume that 5.79(1) of the Trade Marks Ordinance has been impliedly repealed by the new Supreme Court Ordinance. An example of an implied repeal of an earlier statute by a later statute cited to me in argument is The Queen v. The Justices of Glamorganshire (1889)22 QBD 628. But there the later Act, the Summary Jurisdiction Act 1884, was plainly intended to remove the difficulties caused by a diversity of procedures created by the earlier Acts : see Lord Coleridge C.J. at p.630. The later Act was construed by the Court as destroying the express provisions in the earlier Acts which gave a double procedure. The preamble to the 1884 Act stated that it was "expedient to provide for uniformity of procedure in all cases". So in The Queen v. The Justices of Glamorganshire if the later Act did not expressly repeal the earlier Act it came very close in fact to doing so. It was therefore easy for the court to reach the conclusion that the earlier Act had been repealed by implication.

14. I do not think that s.14(1) of the Supreme Court Ordinance can be construed in the same way. It is of course only in the clearances of cases that a statutory provision can be repealed by implication : where, for instance, the provisions of a later enactment are so inconsistent with or repugnant to the provisions of the earlier one that the two cannot stand together : see Kutner v. Phillips 1189112 QBD 267 at 272.

15. In my judgment s.79(1) of the Trade Marks Ordinance governs, and governs alone, appeals to the Court of Appeal from decisions of the High Court on review against the Registrar's decision. There is in my view nothing inherently unjust in this conclusion. The Trade Marks Ordinance established a statutory scheme for trade mark registrations and gave a statutory right to registered owners to oppose applications by others. It would be wholly consistent with good reason to suppose that a comprehensive code was intended, comprising not only reviews by the High Court of the Registrar's decision, but also appeals to the Court of Appeal against judgments and orders of the High Court.

Extension of Time

16. The Trade Marks Ordinance makes no provisions in relation to appeals to the Court of Appeal to extend the time limit for lodging the notice of appeal. Order 3 r.5(1) of the Supreme Court is plainly not applicable, since the court's power there relates to periods "within which a person is required or authorised by the rules to do an act". Order 59 r:14(1) merely lays down the procedure for making applications and is not source of the court's jurisdiction to extend time. Nothing in the Rules of the Supreme Court gives me power as a single judge of the Court of Appeal to dispense with or extend the statutory time limit.

17. I should add for the sake of completeness that if I had concluded that I had the jurisdiction I would, though on a very fine balance, have exercised my discretion in the applicant's favour. From the limited material before me there seems an arguable case to say that the two trade marks relate to the "same description of goods" in the broad sense of that expression in s.21(b) of the Trade Marks Ordinance and, arguably, resemble each other. Given the perhaps surprising ignorance on the part of the Trade Marks Registry concerning the time limit in s.79(1) the fact that the applicant's solicitors also overlooked that statutory provision is perhaps excusable. This matter has dragged on for a very long time and the further time taken for an appeal against Mayo J's order is unlikely to cause Mitac Inc. much prejudice. However it is beyond my power to exercise a discretion in favour of the opponent Mita in this way.

Conclusion

For the reasons which I have given above this application is dismissed.