NATIONAL SEMICONDUCTOR CORPORATION V. THE DIRECTOR OF INTELLECTUAL PROPERTY

1992 No. MP 4152

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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J U D G M E N T

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1. On 28th December 1992 Rhind J. gave leave to the applicant to apply for judicial review of decisions made by Miss Teresa Grant on behalf of the Registrar of Trade Marks on 6th October 1992. I have before me the substantive application.

2. The applicant is a Californian corporation who is the registered proprietor in Hong Kong of two trade marks which incorporated the word "National". Rational is also a Californian corporation, who on 17th August 1990, filed an application to register, in Hong Kong, the trade mark "Rational 1000". This application was advertised in the Government Gazette on 31st January 1992. In order to appreciate what happened next, I have to refer to the chronology of events placed before me.

11th March 1992

3. Deacons received instructions from applicant with regard to the merits of an opposition against the application to register.

13th March 1992

4. Deacons accept instructions.

19th March 1992

5. Letter marked "Without Prejudice" written by Deacons but some dispute as to whether it was "without prejudice". This letter was not placed before me.

26th March 1992

6. Johnson Stokes and Masters (JSM) write indicating they are taking instructions on behalf of Rational and will reply "...when we receive our client's response".

26th March 1992

7. Deacons applied for a 3-month extension of time within which to file the Notice of Opposition. JSM consent.

29th April 1992

8. Deacons write to JSM, thanking them for consent and reminding them that a response to the letter of 19th March 1992 is awaited.

8th May 1992

9. JSM indicated that they were still waiting for "...our client's instructions and will revert to you ..." when a reply is received.

30th June 1992

10. Expiry of extension of time within which to file the Notice of Opposition.

15th July 1992

11. Deacons write to JSM, asking JSM to consent to a further 3 months extension of time within which to file the Notice of Opposition and also ask for a response to the letter dated 19th March 1992.

10th August 1992

12. Simmons and Simmons (S & S) write to Deacons indicating they are acting for Rational in place of JSM and refused to consent to a further extension of time for the filing of the Notice of Opposition out of time.

12th August 1992

13. Deacons write to the Registrar of Trade Marks requesting that an extension of time be granted despite S & S's objection and a hearing should the further extension be refused.

12th August 1992

14. Deacons file the Notice of Opposition.

12th August 1992

15. Deacons by letter notify S & S of their request for a hearing.

12th August 1992

16. Deacons by letter inform the Registrar of Trade Marks of the filing of the Notice of Opposition and confirm the request for a hearing.

8th September 1992

17. Registrar indicates she intends to refuse an extension of time in the exercise of her discretion but before finalising a decision, Deacons would be given an opportunity to be heard.

6th October 1992

18. Hearing date fixed at the Trade Mark Registry. Also date of letter by Registrar refusing to allow Deacons' application for an extension of time and ordering National to pay costs of the hearing.

7th October 1992

19. Deacons by letter request hearing be restored.

8th October 1992

20. Registrar indicates her refusal to restore the hearing.

16th October 1992

21. Deacons file a further application for a 4-month extension of time within which to file the Notice of Opposition and attempt to file the Notice of Opposition.

21st October 1992

22. Trade Marks Registry refused the 16th October 1992 application.

14th December 1992

23. Registrar Trade Marks notify Deacons that written reasons are being prepared.

16th December 1992

24. Registrar Trade Marks' written decision.

31st December 1992

25. Grounds of decision by Registrar posted to Deacons.

11th January 1993

26. Pursuant to leave granted, these proceedings commenced.

27. At the very heart of this application, is what occurred on 6th October 1992, the date fixed for the hearing. Helen Peachey is employed by Deacons as a Trade Mark Agent. She has 10 years experience as a trade mark practitioner, 7 years in England and 3 years with Deacons in Hong Kong. She has considerable experience in dealing with non-contentious trade mark matters including oppositions. She deposes that at any one time she has over one thousand trade mark files under her control. She had the conduct of National's opposition.

28. On Tuesday, 29th September, she prepared for the hearing. She retrieved her file and made handwritten notes of what she intended to say. The hearing was fixed for Tuesday 6th October, which was the date following a public holiday. She had not gone into the office on Saturday, Sunday or Monday. When she woke up on Tuesday morning, she frankly stated that she had totally forgotten about the hearing. She then added this:

"To exacerbate the situation, I was feeling unwell and in fact threw up. However, when I recovered, I went into office arriving at about 10 o'clock. When I arrived in my office I found a number of telephone messages, one of which was from a client who wished to speak to me urgently; the first thing I did was to ring him. During that phone call my secretary came in to tell me that Teresa Grant just telephoned from the Trade Marks Registry enquiring to my whereabouts, and asked me that I be reminded at the hearing (sic). I immediately cut short my phone call with the client and telephoned Teresa Grant; it was now about 10.20 a.m. I got through to Teresa Grant's secretary who told me that Teresa Grant was in a meeting but that she would fetch her. I understood from what the Secretary said that the hearing had already commenced, then Teresa Grant came to the phone. I apologised for not being at the hearing, on that Teresa Grant fell pressured by Miss Boddy to get on with the hearing notwithstanding my absence. I specifically asked Teresa Grant: "Are you sure I can't come now." To which she replied: "We can't wait any longer." I took "We" to mean Teresa Grant and Miss Boddy. In the face of Teresa Grant's clear determination to go ahead with the hearing, I asked that she give consideration to my 12th August letters. ...Teresa Grant assured me that she would take due note. The telephone call lasted about 3 or 4 minutes. I was very surprised to the hearing officer's decision and even more so her reasons I set out in a letter dated 8th October. Even if she had formed the impression that I had no excuse whatsoever from missing the hearing, she should, nevertheless, have adjourned (on whatever terms) but not make an order the effect of which was to deny the opponent the opportunity to be heard and barred it from opposing Rational's application."

29. On 8th October 1992, Teresa Grant wrote to Deacons stating that their application for an extension of time had been refused "because you failed to attend yesterday's hearing. The proposed opponent's right to be heard on the application was a right that should have been exercised at the hearing. I am unable to restore the application."

30. In this letter, Miss Grant went into a little more detail as to what happened and I believe it important to set out her version. She says:

"I telephoned your office at about 10.15 a.m. Miss Peachey's secretary told me Miss Peachey was engaged on another line. I left a message that Deacons ought to have attended a hearing at 10 a.m. I informed Miss Boddy of Simmons & Simmons, who had been waiting with me in the hearing room, that Miss Peachey was engaged. Miss Boddy said she was not prepared to wait any longer. I began the hearing at 10.20 a.m. Very shortly afterwards, I was told that 'Deacons' wished to speak to me on the telephone. Miss Peachey told me she was ill and asked me if she should come over immediately. I said 'no' because Simmons & Simmons were not prepared to wait for her. Miss Peachey said I should take note of her two letters of submission on the file and she would wait to hear the outcome of my decision. I returned to the hearing. I told Miss Boddy that Miss Peachey was ill. Upon hearing this, Miss Boddy continued with her submissions. The hearing ended just before 10.30 a.m."

31. The decision of 16th December 1992 sets out the background and refers to the letter to which I have just referred. Having referred to the phone call made to Deacons and the fact that Miss Peachey was engaged, Teresa Grant told Miss Boddy that Miss Peachey was engaged and she then continued in paragraph 13 as follows:

"It was in these circumstances and on Miss Boddy's saying that she was not prepared to wait any longer for Miss Peachey, that I began at 10.20 a.m. to hear Miss Boddy's submissions. Those submissions were that the proposed opposition had been conducted with unjustified delay, that the proposed opponent's failure to attend the hearing was typical of that conduct and that the extension of time the proposed opponent was seeking should be refused." [emphasis added]

In paragraph 14, she says this:

"At this point the hearing was interrupted. I was told that 'Deacons' wished to speak to me on the telephone. Miss Peachey told me she was ill and asked me if she should come over immediately. I said 'no' because Simmons & Simmons were not prepared to wait for her. Miss Peachey said I should take note of her 2 letters of submissions on the file and she would wait to hear the outcome of my decision. I returned to the hearing and I told Miss Boddy that Miss Peachey was ill. Upon hearing this, Miss Boddy continued with her submissions."

32. Teresa Grant gave her decision at the hearing that the applicant for registration was entitled to the order asked, namely that an extension of time should be refused. She awarded the costs of the hearing to the applicant. The hearing ended just before 10.30 a.m. In paragraph 17, she deals with the way in which she exercised her discretion and said:

"In exercising my discretion to refuse the proposed opponent's application for an extension of time, I took into account the fact that the applicant did not consent to an extension of time, that the proposed opponent had not sought consent to a further extension of time until after the period of first extension had expired and that the applicant had not been given an opportunity to consent to the filing of a Notice of Opposition nearly 2 months before the hearing when the notice was lodged in the Registry.".

In paragraph 18 she continued as follows:

"However, essentially, I considered that as the proposed opponent failed to attend the hearing on the application for extension of time, I should refuse the application."

33. In paragraph 21 of the written decision, Teresa Grant makes clear that she did not take into account the submissions made in Deacons' 2 letters of 12th August 1992 on the ground that the proposed opponent had called for a hearing at which to present oral submissions. Because they did not attend the hearing to make these submissions she did not consider that she could take written submissions into account in lieu of the opponent's attendance. She then added that there did not appear in any event to be any weight in these submissions.

34. In paragraph 22 of the written decision Teresa Grant makes clear that she took into account the fact that Miss Peachey was in her office 15 minutes after the time that the hearing should have begun, and that she received no phone call from Miss Peachey before the hearing to say she was ill or to seek an adjournment. No one had been sent from Deacons to act in Miss Peachey's place. She then added this:

"When Miss Peachy telephoned with her offer to come over immediately, I considered that to hold up the proceedings again for longer than the hearing seemed likely to last, would, in the circumstances, be unjustified."

35. Deacons' offices are in Alexandra House and the hearing took place in Star House which is a Star Ferry ride away from Alexandra House. At the most, it would have taken Miss Peachey 20 minutes to arrive.

36. On 8th March 1992, Teresa Grant filed an affidavit in these proceedings to which I must refer. She points out that she is a solicitor employed by the Hong Kong Government and she holds the post of Senior Solicitor, Law and Post Registration in the Intellectual Property Department. There appears to be some minor dispute as to precisely what was said during the course of the telephone conversation. Teresa Grant says Miss Peachey did not say: "Are you sure I cannot come now." But instead said: "Shall I come over immediately." Teresa Grant denies saying: "We cannot wait any longer," and insisted she said, "Simmons & Simmons are not prepared to wait any longer." As to whether Teresa Grant assured Miss Peachey that she would take due note of the 2 letters dated 12th August, she denies assuring Miss Peachey of this and says her reply was non-committal.

37. In paragraph 12 of this affidavit, she says the following:

"I consider that had I adjourned the hearing, this would effectively have given carte blanche to parties' representatives not to attend any hearing at their choosing for whatever reason. They would know that the Registrar would not make a decision unless they were present. Not only could non-attendance be used as a tool to frustrate the progress of any application for the registration of a trade mark, the adjournment would necessarily be expensive and disruptive to the Registrar in the day-to-day running the registry."

38. Mr. Rogers, Q.C., who appears for National, submits that the decisions of Teresa Grant are both Wednesbury unreasonable. He also relies upon the well known passage which appears at p.1041 in Padfield v. Minister of Agriculture Fisheries and Food [1968] AC 997 where Lord Morris of Borth-Y-Gest said:

"I think it follows that an order of mandamus could only be made against the Minister if it is shown that in some way he acted unlawfully. A court could make an order if it would shown (a) that the Minister failed or refused to apply his mind to or to consider the question whether to refer a complaint, or (b) that he misinterpreted the law or proceeded on an erroneous view of the law, or (c) that he based his decision on some wholly extraneous consideration, or (d) that he failed to have regard to matters which he should have taken into account."

39. Mr. Rogers submitted that conditions (a), (c) and (d) in his passage are applicable to the present case.

40. I now turn to consider the question whether the decision of Teresa Grant was unreasonable in the Wednesbury sense, in other words, was it a decision to which no reasonable officer acting in her capacity could have arrived at. I have to remind myself that it is not sufficient for me to conclude that had I been in Teresa Grant's position, I would or might have come to the opposite decision. Before I can interfere, I have to be satisfied that it is a decision at which no other person in her position could have arrived.

41. I can well understand the feeling of annoyance and frustration which Teresa Grant must have felt. On behalf of the Registrar, she has important and difficult obligations to perform. To be kept waiting is seen by all Tribunals as a discourtesy, and in this case, having been kept waiting, she then phoned to see what the position was and no doubt was further annoyed to hear that Miss Peachey was not only in the office but apparently doing something else. I believe that Teresa Grant was perfectly correct in phoning Deacons. In fact, if she had gone on with the hearing without contacting Deacons to see why no one was present, her action would have been challengeable. In any case where a party does not appear, especially where they are as on that occasion, the applicant, it is in common, in my view, for the Tribunal to make some enquiry because to continue in their absence might be to cause a great injustice. For instance, it may be that the person who was to appear had been injured on the way to court or had been taken ill the night before. Teresa Grant's phone call to Deacons was therefore a perfectly correct thing to do.

42. Mr. Russel Coleman, who has appeared on behalf of the Registrar, has made some powerful arguments. At the fore-front of these arguments was the proposition that it would be absurd if the Registrar's decision was quashed by reason of the fact that Teresa Grant took the trouble to enquire after the non-attendance of the applicant's representative. That is, in my judgment, a neat forensic point but I do not think that it is the answer to the issues I have to determine. No criticism whatsoever can be made of Teresa Grant up to the moment when Miss Peachey returned her call. That, in my judgment, was the time when things went somewhat wrong.

43. It is clear from Teresa Grant's decision and affidavit that she was told that Miss Peachy had been ill. Miss Peachey offered to attend the hearing and Teresa Grant must have known that it would only take some 20 minutes to arrive. Serious matters were in issue, because it is common ground that if this decision stands, it will not be open to National to oppose the registration and this could have substantial financial consequences.

44. I have given this matter the most careful and anxious consideration and I have taken into account all of Mr. Coleman's powerful points, but I have come to the clear conclusion that Teresa Grant's decision were unreasonable in the Wednesbury sense. Miss Peachey offered to attend and could have been there within 20 minutes. Teresa Grant had to make up her own mind as to whether this was acceptable but it appears from the evidence that she simply related the fact that Miss Boddy of S & S was not prepared to wait. No reasons were given as to why Miss Boddy was not prepared to wait. It does not appear to me that Teresa Grant properly applied her own mind to the issue. I think it significant that at no stage did Miss Boddy give any specific reason as to why she could not wait and although I understand that she would find the weight inconvenient, that has to be balanced against the possible injustice to National.

45. In my judgment, any reasonable officer faced with the situation before Teresa Grant would have said to Miss Peachey when she returned the call, "You are late, I suggest you come immediately and I will wait for no more than 20 minutes which is sufficient to allow you to get to the Star Ferry."

46. I also conclude that Teresa Grant took into consideration wholly extraneous considerations, namely the matters set out in paragraph 12 of her affidavit which I have referred to above. In that paragraph she appears to be saying that she refused to adjourn the hearing in order to act as a deterrent to other parties' representatives who might consider failing or refusing to attend a hearing. She goes on to talk about non-attendance being used as a tool to frustrate the progress of any application for the registration of a trade mark. It seems to me that on the facts of this case, such considerations were wholly extraneous. I fail to see how the non-attendance of one representative due to an over sight coupled with illness could lead other parties' representatives to form such a view of the likely attitude of the Registrar. This is just fanciful and I regret to say somewhat self serving. It seems to me to offend the passage quoted in Padfield.

47. I also think the decision is challengeable on the grounds that having been requested, in these special circumstances, to consider the two letters of 12th August 1992, Teresa Grant refused to do so. She appears to be saying that she refused to do so because Miss Peachey did not appear to articulate these submissions orally. However, she later suggested that these submissions were of no weight and it is somewhat difficult to ascertain whether she looked at them at the time or looked at them afterwards. However, it does seem to be clear that she stated that she was not going to look at them and it is unfortunate that even on her case, her reply to Miss Peachey's request that she do look at them was non-committal. I can well accept that Miss Peachey thought that these submissions would in fact be looked at.

48. It also appears to me wholly unsatisfactory that knowing that Miss Peachey could have been there within 20 minutes, Teresa Grant not only told her not to come, not only refused to look at the letter of 12th August 1992 but allowed Miss Boddy to take full advantage of the situation by making serious allegations against Deacons which Deacons were not in any way allowed to rebut. This was in the light of the fact that Teresa Grant knew Miss Peachey had been unwell.

49. Subject therefore to one point raised by Mr. Coleman, to which I will refer in a minute, it seems to me that this is an appropriate case to grant National relief by way of judicial review. Although Mr. Coleman submits, rightly, that there is no statutory basis for fettering the discretion of the Registrar nor does any doctrine of legitimate expectation apply in this case, nevertheless, the decision can be quashed for the reasons which I have stated. I should have added that it was never part of the Registrar's case that Miss Peachey's non-attendance was caused otherwise than by inadvertence exacerbated by illness. There is no question of any deliberate snub upon the Registrar nor any suggestion of tactical behaviour. I should also add that I agree with Mr. Coleman that the proposition that sec. 74 of the Trade Marks Ordinance and Rule 86 of the Trade Mark Rules require a person affected by a decision actually to be heard, whatever the circumstances, is clearly wrong. I also accept his submission that the applicant was seeking an indulgence and the exercise of the Registrar's discretion in it's favour in circumstances when the previous extension had already expired. Nevertheless, none of these points, which I have taken into account, are sufficient to deflect me from the conclusion at which I have arrived. I have not set out the statutory provisions and rules which have been clearly referred to in both sides' skeleton arguments and which are not in issue. The Registrar has a discretion under the rules and it is the circumstances in which it came to be exercised that were in issue in this case.

50. I am also grateful to Mr. Coleman for having referred me to 2 recent cases where Magistrate's decisions to dismiss charges have been quashed by judicial review, in circumstances when the prosecutor appeared late. These are R. v. Hendon Justices, ex parte DPP [1993] 1 All ER 411 and R. v. Sutton Justices, ex parte DPP [1992] 2 All ER 129. I have taken account to the observations of Mann L.J. at p.415 in the Hendon Justice's case and I have taken into account the distinguishing features relied upon by Mr. Coleman.

51. Finally, Mr. Coleman submitted that I should refuse relief by way of judicial review on the ground that National have not exhausted their alternative remedies. I accept his proposition that alternative remedies have to be exhausted and I do not dissent from the views expressed in R. v. Chief Constable of the Merseyside Police, ex parte Calveley [1986] 1 QB 424 where at p.437, May L.J. said:

"...I think that one must guard against granting judicial review in cases where there is an alternative appeal route, merely because it may be more effective and convenient to do so."

52. Similar at p.433, Sir John Donaldson M.R. (as he then was) said at p. 433 that he reiterated what he said in R. v. Epping and Harlow General Commissioners, ex parte Goldstraw [1983] 3 All ER 257 where at 262, he said:

"it is a cardinal principle that, save in the most exceptional circumstances, [the judicial review] jurisdiction will not be exercised where other remedies were available and have not been used."

53. Mr. Coleman submits that there is a clear alternative remedy available to National which is provided by sec. 48 of the Ordinance under which if any person aggrieved by any entry made in the register or by any error or defect in any entry in the register may apply in the prescribed manner to the court for an order making, expunging or varying the entry as the Tribunal thinks fit. He also points out that by virtue of sec. 78 of the Ordinance, the court in dealing with any question of the rectification of the Register shall have the power to review any decision of the Registrar relating to the entry in question.

54. I reject Mr.Coleman's submission. Sec. 48 is not a right of appeal. The onus in sec. 48 proceedings is completely different to the onus in this particular case. Under the Trade Marks Ordinance, the Registrar is only under a duty to register those marks which are registerable and before registration, the onus is upon the applicant for the trade mark to establish the right to registration. In cases of doubt, the Registrar must refuse registration. Further, the Registrar has a discretion to refuse registration. This means that the onus in the proceedings which gave rise to this application for judicial review is fairly and squarely upon Rational. Once registration has taken place, sec. 48 comes into play and the onus then shifts to National because they would be attacking a registration and they would have to show that the trade mark is invalid and clearly National would be in a less favourable position than if it was an opponent to registration. For these very cogent reasons, whilst accepting the proposition that judicial review may be refused if other remedies are available and have not been used, I am not satisfied that the proceedings under sec. 48 can be described as other remedies the failure to make use of which justifies the refusal of relief in this case.

55. Mr. Coleman on behalf of the Registrar invited me to lay down guidelines for the exercise of discretion in the event that I was against him. I do not think that it is helpful to lay down guidelines for the exercise of the very wide discretion in circumstances such as this. However, I am prepared to add the following. Any Tribunal faced with a situation such as that in this case has first to attempt to ascertain whether there is a valid reason why the person has not attended. Reasonable enquiries ought to be made. Another factor which the Tribunal ought to take into account is whether a failure to appear was inadvertent or wilful. Clearly in wilful cases, perhaps heralded by a previous history of wilfulness, the discretion may be exercised adverse to that party. But all Tribunals have to recognize that, although there are rules and time limits, these have to be considered reasonably having regard to the circumstances of the particular case and having regard further to the general interests of justice. In this particular case, I raised with Counsel why at the very end of the 20th century, when technology is all the rage, Miss Peachey's phone call would not have been connected to both Miss Boddy and Miss Grant and the hearing proceeded by way of a conference call. If all three parties agreed to this course of action, I find it difficult to see how any court could subsequently wish to interfere.

56. In all the circumstances of this case and in the exercise of my discretion, I propose to order the issue of a writ of certiorari to move into this court and to quash the decision of Teresa Grant made on 6th October 1992 for and on behalf of the Director of Intellectual Property in the capacity of the Registrar of Trade Marks whereby the applicant's application for extension of time to file a Notice of Opposition out of time was refused. I do not propose to grant the declaration sought that an extension of time is hereby granted as that would clearly be exercising my discretion when the legislature has given that discretion to the Registrar. However, I will direct that the Registrar of Trade Marks or someone for and on his behalf, other than Teresa Grant, should properly consider and determine the application made by the applicant for an extension of time to file a Notice of Opposition out of time.

57. I propose to make a costs order nisi in favour of the applicant.