AVON PRODUCTS, INC v. DEAN L. RHOADES

HCMP 1012/2005

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 1012 OF 2005

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RULING

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1.  This is an application for leave to extend the time against which an application may be made to appeal against the decision of the Registrar of Trade Marks extending time under Rule 16(4) of the Trade Marks Rules.

2.  The reason I am granting leave to appeal is that I consider that two important points of law arise in the matter and they ought to be considered.

3.  The first question is as to the power of the Registrar to extend time under Rule 16(4) for opposition to a trade mark being registered.  The legislation gives the Registrar power to extend the time by two months.  The Registrar takes the view that that two-month extension can only run from the last day on which the notice of opposition may be filed.  That view has resulted in a quite extraordinary situation that is amply demonstrated by this case.

4.  Here, when the application for extension was made, the two-month period would have expired, if the Registrar’s view of the law is correct, on 9 February.  However, the Registrar, well prior to that date,  fixed the hearing date for the application to extend time, for 18 February, a date after which time would already have expired.  It may well be, as Miss Chow puts it to me, that the safest course to follow in that circumstance is to file a notice of opposition before the assumed extended time expires, then go along on 18 February and seek some sort of retrospective order which approves the act has already been taken of filing the notice of opposition.  But it seems to me that the much more sensible course, if the Trade Mark Registry is not able to give hearing dates in sufficient time, would be that the time should be extended at the hearing, or after the hearing date when the notice of the decision is given, giving, if it is a proper case for an extension, an extensions of two months or some shorter time, for filing the opposition, that time to run form the date of the decision.  That is the first issue of law that arises.

5.  The second issue of law that arises comes out of the provisions of Rule 91(1) of the Trade Marks Rules, which provides that:

 “where the Registrar makes a decision in any proceedings, he must send a notice to each party informing them of the decision”.  

There is a document that is required to be completed when the application for leave to extend time is made, and that contains two boxes – one of the boxes indicates that the applicant will attend the hearing and the other box indicates that the applicant seeks reasons for the decision.  Different fees are payable depending upon which box is ticked.

6.  In this case, the Applicant for the extension of time sought only to extend the time and did not seek reasons for the decision to extend or a refusal to extend time.  In this particular case, when the decision was issued, it came with five pages of what are apparently reasons for the decision.  But no reasons had been formally requested.  The Intended Opponent thereupon sought reasons for  the decision, and paid the appropriate fee for those reasons.

7.  It is arguable that, in the light of there being five pages of reasons, it was somewhat disingenuous of the solicitors for the Intended Opponent to then seek reasons.  But if the situation is compared with the practice in the Magistrates’ Court, it is not disingenuous to have followed that course.  A Magistrate may convict a person and give brief reasons at the time of hearing, and if an appeal is filed more substantial reasons are given later when the magistrate prepares his Statement of Findings.  It may well be that the Intended Opponent expected more substantial reasons.  Certainly, their letter requesting the reasons paid the fee for the reasons.

8.  So it seems to me that there is some real confusion over the provisions of Rule 91 of the Rules, and the circumstances in which reasons supplied at the time of the decision are the “Statement of the Reasons” contemplated by Rule 91(2).  The matter is important because different time limits for appeal apply depending on whether reasons are given for the decision at the same time or later.

9.  Miss Chow has properly and frankly conceded to me that her client suffers no prejudice as a result of the decision to grant leave to appeal.  It is right that had there been no opposition, the applicant would have now had in his hands the approval of the trade mark.  The legislation makes specific provision for a right to oppose an application and for appeals from any decision on a notice of opposition.   Thus the system of the legislation contemplates potential delays in the obtaining of registration of a trade mark, and consequently that a person might not necessarily get their approval immediately.  The delay in getting approval is not a prejudice arising from the failure to appeal in time, but from the system of the legislation.

10.  Miss Chow’s client faces additional costs.  It has been entitled to oppose the appeal and, with the Intended Opponent seeking an indulgence from the Court, the Applicant for Registration may reasonably expect its costs on appeal.  Mr Wheare, I do think, would suggest to me, that there should be no order for costs against the Intended Opponent because a discretion is being exercised.

11.  For these reasons, I grant an extension of time to file the appeal.  The appeal must be filed within 14 days of today’s date.  The Applicant for Registration will have his costs on the application for leave to appeal on a party-and-party basis.

12.  The Registrar of Trade Marks appeared before me today, represented by counsel from the Department of Justice.  That was quite an unnecessary step.  The proper role of the Registrar, where there are parties both for and against the decision which has been made, is to simply abide the decision of the court.  It is quite wrong and quite unnecessary for the Department of Justice to be here, they do not fight their corner on the appeal, but simply abide the decision of the Court of Appeal, just as I do, when decisions from my trials go to the Court of Appeal.  I do not award any costs in favour of the Registrar of Trade Marks for that reason.