SEIKO EPSON CORPORATION v. THE REGISTRAR OF DESIGNS

CACV 242/2000

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO. 242 OF 2000

(ON APPEAL FROM HCMP NO. 844 OF 2000)

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J U D G M E N T

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Keith JA (giving the first judgment at the invitation of Rogers V-P):

Introduction

1. This appeal raises a short but by no means easy point on the proper construction and application of a provision in the Registered Designs Rules ("the Rules"). Individual rules are described in the Rules as sections. However, in this judgment, I propose to refer to them as rules to distinguish them from sections in the Registered Designs Ordinance (Cap. 522).

The statutory framework

2. Before the commencement of the Registered Designs Ordinance, designs which were registered in the United Kingdom under the Registered Designs Act 1949 ("UK registered designs") were protected in Hong Kong pursuant to the United Kingdom Designs (Protection) Ordinance (Cap. 44) ("the old Ordinance"). However, the change of sovereignty in 1997 resulted in Hong Kong having its own legislation governing registered designs. That legislation was the Registered Designs Ordinance ("the Ordinance"). It came into effect on 27 June 1997. It repealed the old Ordinance and established the Designs Registry in Hong Kong. After the commencement of the Ordinance, applications for the registration of designs had to be filed with the Registrar of Designs ("the Registrar"), and rights were only acquired if the particulars of the design were entered on the Designs Register.

3. However, on the date of the commencement of the Ordinance, there were subsisting UK registered designs which had been protected under the old Ordinance prior to its repeal. Thus, transitional provisions were included in Part IX of the Ordinance to continue protection for such designs. By section 91(1) of the Ordinance, UK registered designs were deemed to be registered under the Ordinance for an "initial period of registration" identified by section 91(3) of the Ordinance.

4. Section 92(1) of the Ordinance provides that the initial period of registration may be extended for additional periods of five years. If the registered owner of the design wants to renew the period of registration after the initial period of registration, section 92(2) of the Ordinance requires him to submit an application to the Registrar in accordance with section 92(3) of the Ordinance. Section 92(3)(a) lays down the time for such an application to be submitted. It requires the application to

"be submitted before the later of -

(i) the date that is 6 months prior to the expiration of the initial period of registration under this Ordinance; and

(ii) the date that is 6 months after the commencement of this Ordinance ...."

Other provisions deal with what should be included with the application. Thus, section 92(3)(b) sets out the documents which must be included with the application, and section 92(3)(c) requires the application to be accompanied by the prescribed renewal fee.

The Appellant's designs

5. The Appellant, Seiko Epson Corporation, is the owner of six UK registered designs. By virtue of section 91(1) of the Ordinance, the designs were deemed to be registered under the Ordinance. By virtue of section 91(3) of the Ordinance, the initial period of registration for the six designs expired on various dates between 18 January 2000 and 10 May 2000. Thus, section 92(3)(a)(ii) of the Ordinance required the applications to renew the period of registration of the six designs after the initial period of registration to be submitted to the Registrar on various dates between 17 July 1999 and 9 November 1999. They were not in fact submitted until 10 January 2000.

6. Realising that the applications had been submitted out of time, the Appellant's solicitors asked for an extension of time for submitting the applications. The Registrar refused to extend the time. He took the view that he had no power to do so, section 92 of the Ordinance containing no express provision permitting him to extend the time limits laid down by section 92(3)(a) of the Ordinance. The Appellant appealed to the Court of First Instance, pursuant to section 58(1) of the Ordinance which confers a right of appeal to the Court of First Instance against any decision of the Registrar under the Ordinance. The appeal was heard by Deputy Judge Kwan. In an articulate and well-argued judgment, she held that the Registrar had the power to extend the time limits laid down by section 92(3)(a) of the Ordinance. She therefore proceeded to exercise the discretion which the Registrar had not exercised, and she extended the Appellant's time for submitting the application to renew the period of registration for the designs to 10 January 2000. The Registrar now appeals to the Court of Appeal, contending that his construction of the Rules was right and that the judge's was wrong.

7. On the hearing of the Registrar's appeal, Mr Geoffrey Ma SC for the Registrar did not challenge the way in which the judge had exercised her discretion. The only challenge was to her conclusion that the Registrar had the power to extend the time limits laid down by section 92(3)(a) of the Ordinance.

The provision relating to extensions of time

8. The provision in the Rules which the judge held enabled the Registrar to extend the time limits for submitting an application for the first renewal of a UK registered design is rule 73 of the Rules. It provides:

"(1) The Registrar may, upon application made on the specified form by the person or party concerned and upon such notice to any person or party affected as he may direct, extend or further extend any period of time for doing any act or taking any proceeding under these Rules, other than the periods referred to in section 29, on such terms as he may direct.

(2) An extension may be granted under this section notwithstanding that the period of time in question has already expired."

Section 29 (i.e. rule 29) of the Rules relates to renewals of the period of registration for designs actually registered, rather than UK registered designs deemed by section 91(1) of the Ordinance to be registered, under the Ordinance.

9. It is important to note that the power to extend time only applies to "any period of time for doing any act or taking any proceeding under these Rules". Thus, there is no power to extend "any period of time for doing any act or taking any proceeding" under the Ordinance. This distinction was obviously intended by the drafters of the Rules. When the Rules intended any reference to relate to both the Ordinance and the Rules, both terms are used: see, for example, rule 72(1) of the Rules.

10. However, even if the power to extend time relates only to "any period of time for doing any act or taking any proceeding" under the Rules (as opposed to under the Ordinance), a question arises as to what the phrase "under these Rules" actually refers to. There are three possibilities:

(i) The words "under these Rules" refer to the words "any period of time", so that the power to extend or further extend any period of time only applies to periods of time stipulated by the Rules. If that is correct, the time for applying for a first renewal of a UK registered design cannot be extended, and the Registrar's appeal must be allowed, because the time limit for such an application is stipulated, not by the Rules, but by the Ordinance, viz. section 92(3)(a) of the Ordinance.

(ii) The words "under these Rules" refer to the words "any act or .... proceeding", so that the power to extend or further extend any period of time only applies to acts or proceedings provided for by the Rules. If that is correct, the critical issue is whether an application for the first renewal of a UK registered design constitutes an act or proceedings under the Rules rather than under the Ordinance. If it is only a provision in the Ordinance which provides for such an application, then again the Registrar's appeal must be allowed, because the application for a first renewal of a UK registered design will have constituted an act or proceedings under the Ordinance rather than under the Rules.

(iii) The words "under these Rules" refer to both the words "any period of time" and the words "any act or .... proceeding". If that is correct, the fact that they refer at least to the words "any period of time" means that the Registrar's appeal must be allowed for the reason given in (i).

Thus, in order to allow the Appellant's appeal from the decision of the Registrar, the judge had to conclude that (a) the words "under these Rules" refer only to the words "any act or .... proceeding", and (b) an application for the first renewal of a UK registered design constitutes an act or proceedings under the Rules rather than under the Ordinance. The issue in (a) is a pure question of construction of rule 73(1) of the Rules, whereas the issue in (b) relates to the proper application of rule 73(1).

11. The judge's conclusion on the question of construction - that the words "under these Rules" refer only to the words "any act or .... proceeding" so that the Registrar had the power to extend periods of time stipulated not merely by the Rules but also by the Ordinance - was based on provisions equivalent to rule 73(1) in rules made under the Trade Marks Ordinance (Cap. 43) and the Patents Ordinance (Cap. 514), namely rule 91 of the Trade Marks Rules and section 100(1) of the Patents (General) Rules. Like the Ordinance, these Ordinances related to intellectual property, and the relevant rules concerned the registration and renewal of intellectual property rights. Moreover, the schemes of registration under all three Ordinances are administered by the Director of Intellectual Property. The contrast between the Ordinance on the one hand and the Patents Ordinance and the rules made under it on the other was said to be particularly striking, because both Ordinances were promoted by the Intellectual Property Department and came into operation on the same day.

12. I am very sceptical about the reliance which the judge placed on these Ordinances. It is dangerous to use the language of one ordinance to construe the language of another ordinance. Moreover, I am not convinced that a comparison of the language of rule 91 of the Trade Mark Rules and section 100(1) of the Patents (General) Rules with the language of rule 73(1) necessarily leads to the conclusion which the judge reached. Indeed, the judge's construction of rule 73(1) would produce the surprising result of a time limit laid down by an ordinance being capable of being extended, not as a result of a provision in the ordinance, but by virtue of a provision in rules made under the ordinance.

13. However, in my opinion, the question of construction does not have to be addressed, since I have reached a different conclusion from the judge on the issue in (b) - namely that an application for the first renewal of a UK registered design constitutes an act or proceedings only under the Ordinance and not under the Rules. That is because it is a provision in the Ordinance which provides for such an application. If the owner of a UK registered design wishes to renew the period of registration after the initial period of registration, it is section 92(2) of the Ordinance - rather than a provision in the Rules - which requires him to submit an application to that effect to the Registrar.

14. If it is a provision in the Ordinance which requires the owner of a UK registered design to submit an application for its first renewal to the Registrar, on what basis did the judge conclude that such an application was nevertheless an application under the Rules? On this issue, she regarded rule 75 of the Rules as critical. Rule 75 is the only rule in the Rules under the heading "Transitional Provisions (Section 92 of Ordinance)". It provides:

"(1) An application under section 92(2) of the Ordinance shall be made on the specified form.

(2) On an application being made under subsection (1), the Registrar may, if satisfied that the design is deemed by section 91 of the Ordinance to be registered under the Ordinance, enter in the Register the particulars referred to in section 25(1)."

The judge regarded "an application being made under subsection (1)" - which is the language used in rule 75(2) and refers to an application under rule 75(1) - as providing for an application by the owner of a UK registered design for a first renewal just as much as section 92(2) provided for such an application. I cannot go along with this argument. I cannot treat rule 75(1) as providing for such an application. It merely provides for how such an application - i.e. an application under section 92(2) of the Ordinance - is to be made. It serves the same purpose as sections 92(3)(b) and 92(3)(c) of the Ordinance. Those sections identify the documents to be included with the application and require the prescribed renewal fee to accompany the application. All these provisions do no more than specify how an application under section 92(2) is to be made. Rule 75(1) does not militate from the conclusion that an application for the first renewal of a UK registered design constitutes an act under only section 92(2), rather than one under both section 92(2) and rule 75(1), because rule 75(1) merely lays down how the act under section 92(2) is to be carried out. And the words "an application being made under subsection (1)" in rule 75(2) simply mean in my opinion "an application under section 92(2) of the Ordinance being made on the specified form as required by subsection (1)".

Subsequent renewals

15. In reaching this conclusion, I have not overlooked the judge's analysis of the provisions in the Ordinance for subsequent renewals of UK registered designs which have been deemed to be registered under the Ordinance. By subsequent renewals, I refer to renewals for further periods of registration after the initial period of registration and after the first extended period of five years. Such renewals are governed by section 92(4) of the Ordinance, and they provide that sections 28(3), 28(4) and 28(5) of the Ordinance apply to such renewals. These sections are the provisions relating to renewals of the period of registration for designs actually registered, rather than designs deemed by section 91(1) of the Ordinance to be registered, under the Ordinance.

16. The judge correctly identified three differences between applications for (a) the first renewal of the period of registration for designs deemed to be registered under the Ordinance and (b) subsequent renewals of the period of registration for such designs:

(i) For subsequent renewals, the application must be made within a specific period, namely "before the end of the current period of registration but not earlier than 3 months immediately preceding the end of the current period": section 28(3) of the Ordinance and rule 29(1) of the Rules. That is to be contrasted with applications for the first renewal of the period of registration which must be made before a specified date: section 92(3)(a) of the Ordinance.

(ii) For subsequent renewals, the Registrar is required to remind the registered owner of the design that the period of registration is about to expire: rule 28 of the Rules. Thus, the possibility of the owner inadvertently allowing the registration to lapse is minimised. No such provision applies to a first renewal. As the judge pointed out, that is hardly surprising: UK registered designs deemed to be registered under the Ordinance are deemed to be so registered without the need for re-registration. Since they are not entered on the Register kept by the Designs Registry, the Registrar would not know about them, and would therefore be unable to remind the registered owners of their imminent expiry.

(iii) Section 28(5) of the Ordinance provides that if the renewal fee and any prescribed additional fee are paid during the period of six months immediately following the end of the current period of registration, the registration of the design will be treated as if it had never ceased to have effect. Thus, for subsequent renewals, there is in effect a grace period of six months. No such grace period is available in the case of a first renewal.

These differences show that the statutory regime for subsequent renewals is significantly more benevolent to owners of UK registered designs than that for first renewals.

17. Counsel then appearing for the Registrar argued that there were good reasons for the relatively "harsh" treatment of applications for first renewals of UK registered designs. The judge did not agree with him. She said that

".... as the transitional provisions of the Ordinance were enacted to give continued protection to United Kingdom design registrations, it would require very clear language to exclude first renewal of deemed registrations from the power to extend time, otherwise the protection which registered owners used to enjoy under the [old Ordinance] might be seriously jeopardised."

All that may be correct, but the fact remains that, for the reasons which I have endeavoured to give, an application for a first renewal of a UK registered design cannot be regarded as anything other than an act or proceedings provided for by the Ordinance and not by the Rules.

The Paris Convention

18. Similar considerations apply to the reliance placed by Mr Andrew Liao SC for the Appellant on the Paris Convention for the Protection of Industrial Property, which extends to Hong Kong. I accept, of course, that if a statutory provision is reasonably capable of bearing more than one meaning, there is a presumption that the construction which should be adopted is the one which is consistent with Hong Kong's treaty obligations. Mr Liao contended that since one of the articles of the Convention requires a period of grace of not less than six months for the payment of the prescribed fees for maintaining industrial property rights, rule 73(1) should be construed in a way that permits the time for applying for the further renewal of a UK registered design to be extended.

19. I do not believe that this tenet of statutory construction is engaged in the present case. The issue is whether an application for a first renewal of a UK registered design is "any act or .... proceeding" under the Rules. That issue does not involve the construction of rule 73(1). It involves the determination of whether an application of that kind is provided for by section 92(2) of the Ordinance or rule 75(1) of the Rules or both.

Conclusion

20. For these reasons, I would allow this appeal, I would set aside the order of the judge allowing the Appellant's appeal from the decision of the Registrar and granting the Appellant an extension of time for submitting the applications to renew the period of registration for the six designs to 10 January 2000, and I would order that the Appellant's appeal from the decision of the Registrar be dismissed. At present, I see no reason why costs should not follow the event, and the order nisi which I would make as to costs is that the Appellant must pay to the Registrar his costs of both the appeal to the Court of First Instance and the appeal to the Court of Appeal, to be taxed if not agreed.

21. Finally, at first blush, the heading to this judgment appears to be incorrect. If the Registrar is appealing from the judgment at first instance, why is Seiko Epson Corporation named as the Appellant? The answer is that para. 7 of the Practice Direction for civil appeals to the Court of Appeal requires the description of the parties to the appeal to the Court of Appeal to be the same as the description in the court of first instance. Since the hearing in the Court of First Instance was itself a statutory appeal otherwise than from an inferior court, Seiko Epson Corporation was then the Appellant and the Registrar was then the Respondent.

Le Pichon JA:

22. I have had the advantage of reading the judgments of Keith JA and the Vice-President in draft. I agree that this appeal should be allowed with the order proposed for the reasons given in the judgment of the Vice-President.

Rogers V-P:

23. I have had the advantage of reading the judgment of Keith JA in draft. I agree with him that this appeal must be allowed and with the Order proposed.

24. This appeal raises the question as to whether the Registrar has the power under the Registered Designs Ordinance or the Registered Designs Rules to extend time in respect of renewal applications made under section 92 of the Ordinance. The relevant provisions of section 92 of the Ordinance have already been set out in Keith JA's judgment.

25. As Keith JA has pointed out, for some reason in the Registered Design Rules the rules themselves are referred to as sections. For convenience I will also adopt the term Rule when referring to "sections" in the Rules.

26. The only provision relied upon by the Appellant (that is Seiko Epson Corporation) is Rule 73 of the Registered Designs Rules which reads:

"(1) The Registrar may, upon application made on the specified form by the person or party concerned and upon such notice to any person or party affected as he may direct, extend or further extend any period of time for doing any act or taking any proceeding under these Rules, other than the period referred to in section 29, on such terms as he may direct."

27. There is no doubt that section 29 refers to Rule 29.

28. The judge below held that the words "under these Rules" referred to the words "any act or ... proceeding", so that the power to extend or further extend any period of time applies to acts or proceedings provided for by the Rules.

29. In my view it is clear that the words "under these Rules" must relate both to the doing of any act or taking of any proceeding as well as to the relevant period of time. To construe the words in this way, in my view, is to give them their natural meaning.

30. Moreover it is quite clear from the concluding words of sub-rule (1) (those relating to Rule 29) that the sub-rule is referring to periods of time as well as the taking of the steps.

31. In so far as the judge referred to the Trade Marks Ordinance and the Rules made under that ordinance and of the Patents Ordinance and the Rules made under that ordinance, such reference can only be of limited interest. In any event, a comparison of the various sections does not, in my view, lead to the conclusion reached by the Judge.

32. However, possibly one aspect, which again might be of only limited persuasive import, is that in relation to industrial property matters time limits are important; the power to extend time limits sometimes exists; but it is unusual, to say the least, to find the power to extend a statutory time to be given in rules made under the statute. Generally speaking the power to extend a statutory time limit is to be found in the statute itself. Whilst the wording of section 79(2)(f) and (4)(b) does at first sight enable such Rules to be made, it would seem necessary to have very clear words to indicate that Rules permit the extension of a statutory time limit. Nevertheless that has not been done on this occasion.

33. Furthermore, the judge's construction would entail that the rule gave a power to extend the time limit contained otherwise than in the rules, even if, on the judge's construction, the requirement to perform the act was in the rules. This would be a surprising state of affairs. It would not be one of which would commend itself without clear words.

34. But as to that point, it is also clear in my view that the act required to be done, namely the submission of the application is one which is contained in section 92 of the Ordinance. In this respect I need add nothing further to what has already been said by Keith JA on this point

35. As has been said by Keith JA, neither a comparison with the provisions of section 28 nor a consideration of the Paris Convention assists the Appellant.