MITA KOGYO KABUSHIKI KAISHA v. MITAC INC.

1992, No.179
(Civil)

_______________

H E A D N O T E

_______________

Time limit for appeals under s.79(1) Trade Marks Ordinance - Court has no power to extend time - s.79(1) not impliedly repealed by s.14(1) Supreme Court Ordinance - 6 weeks in Order 59 r.4(1)(c) inapplicable.

IN THE COURT OF APPEAL

1992, No. 179
(Civil)

(On appeal from Miscellaneous Proceedings No.2766 of 1992)

_______________

J U D G M E N T

_______________

Nazareth, J.A.:

1. This is the judgment of the Court.

2. This is an appeal, by way of application under O59, r.14(12) of the Rules of the Supreme Court, against the judgment of Litton J.A. sitting as a single judge of this Court. By that judgment, delivered on 29th October 1992, Litton J.A. refused to extend time to the appellant ("Mita") to appeal against the judgment of Mayo J. delivered on 6th July 1992, upholding the decision of the Registrar of Trade Marks ("the Registrar") allowing the application of the respondent ("Mitac") for its Mitac mark to be registered as a trade mark.

3. The history of the matter was concisely stated by Litton J.A. in the following way. In 1982 Mitac applied for the registration of its Mitac 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. Ultimately, an extension of time was granted and the appeal came before Mayo J. and, as mentioned, was dismissed on 6th July 1992 although the judge's order was not perfected until the 14th July 1992.

4. Meanwhile on the 10th July 1992, Mita's solicitors requested the Trade Marks Registry to defer registration pending appeal, and copied their request to Mitac. On the 24th July, the Registrar replied consenting to deferment and stating that the time for appealing was 28 days from the date of judgment. On 27th July Mita's solicitors wrote to the Registrar querying the time limit. On the same day the three week period commencing with the judgment of Mayo J. expired. On the 3rd August, the Registrar replied that the period for appealing was 42 days from sealing. On the 24th August, Mita's solicitors attempted to file a notice of appeal prior to service, but this was refused by the Supreme Court Registry staff on the ground that it was out of time. Mita then sought Mitac's consent to appeal out of time on the 28th August, but this was not forthcoming, and on 7th September made its application for the extension of time to appeal.

5. At the heart of the matter is the question whether the time limit prescribed by O59, r.4(1)(c) for appealing i.e. six weeks, applies or alternatively that in s.79(1) i.e. 21 days. If it is the former, then Mita's attempt to file a Notice of Appeal on the 24th August 1992 prior to service on Mitac was, it is not in dispute, in time. Litton J.A. held that it was the latter, and moreover that the Trade Marks Ordinance made no provision for the extension of the time limit.

6. The text of the two competing statutory provisions are as follows:

Section 79(1) Trade Marks Ordinance -

79. Appeal to Court of Appeal. Discretion of Court in appeals

(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.

Order 59, rule 4(1)(c) -

(1) Except as otherwise provided by these rules, every notice of appeal must be served under rule 3(5) not later than the expiration of the following period beginning on the date immediately following the date on which the judgment or order of the court below was sealed or otherwise perfected, that is to say-

................

(c) in any other case, 6 weeks.

7. Mr Anthony Rogers, Q.C. who, with Miss Monica Chow, also appeared for Mita below, commenced his submissions by tracing in considerable detail the history of the Trade Marks Ordinance and of appeals on application matters. However we do not think it necessary to refer to more than the following. As originally enacted the Trade Marks Ordinance, which remained substantially unchanged up to 1954 in material respects, provided for an appeal to the Governor against decisions of the Registrar, but not to the High Court although the Governor could refer appeals to the High Court. There was no provision for appeal to the Full Court, and accordingly although the Governor's decision should therefore have been final, it seems to have been assumed, in some quarters at any rate, that an appeal did lie to the Full Court from the High Court. This, Mr Rogers submits, would also seem to be the implication of the original s.56 of the Trade Marks Ordinance, which provided for appeals to the Governor. However, he was not able to trace any actual trade marks appeal from the High Court to the Full Court in the Hong Kong Law Reports. Towards the end of the 1940s, it was discovered that the right of appeal to the Full Court from the High Court given by s.28 of the Supreme Court Ordinance, was only in respect of the original and not the appellate jurisdiction of the High Court (Cheung Sau Tim v Cheung Yui Lam [1948] 32 HKLR 31; Liu Hin Ming v The Crown [1953] 37 HKLR 133; Chan Wing On v Director of Public Works [1965] HKLR 192).

8. When the Trade Mark Bill was introduced in 1954, the provision for appeal to the High Court was retained and clause 79(1) specifically gave a right of appeal to the Full Court from the High Court, in Mr Rogers' submission clearly including application matters, which had not too long before then been shown not to have subsisted. Mr Rogers called attention to the words "pronounced or made" in Clause 79(1), suggesting that the draftsman of the legislation had clearly been alerted to the position by the then recent authorities, which tie in with the procedure in existence in 1954 i.e. in the Code of Civil Procedure. Under that procedure, an appellant brought his appeal by filing his notice of motion, and subsequently serving the notice of appeal on the respondent (O29, rr.3, 13, 15; ss.597, 607, 609). Therefore in 1954 an appeal to the Full Court was brought by filing the notice of appeal. A similar situation existed under s.98(2) of the Bankruptcy Ordinance, Cap.6, apparently the only other statutory provision in Hong Kong equivalent to s.79(1) of the Trade Marks Ordinance, although s.100(4) conferred express power on the court to extend time which however is lacking in the Trade Marks Ordinance.

9. However in 1967, the Rules of the Supreme Court were changed; while the appeal procedure generally remained the same, time limits were made to operate from service of the notice of appeal and the former procedure of commencing an appeal disappeared. In addition, the Rules of the Supreme Court make specific provision for appeals to the High Court in respect of Trade Marks (O.100).

10. The foregoing historical exegesis, presented in greater detail and rather more plausibly than it is outlined above, was relied upon by Mr Rogers primarily for his submission that s.79(1) was intended to ensure the continuance of the right of appeal in application matters, which it was not realised until very late, did not exist; that therefore the section was not intended to be exclusionary. It does not seem to us that such a conclusion can be warranted, for an essential step in reaching it was that the Trade Mark Bill was enacted in 1954 upon the assumption that there was a subsisting right of appeal to the Full Court from the High Court in respect also of its appellate jurisdiction and that such right would continue. That step is a false one. Cheung Sau Tim revealed some six years earlier, and Liu Hin Ming provided a contemporaneous reminder for good measure, that there was no such right of appeal. However that may be, we did not understand it to be advanced as warranting the construction contended for - clearly it does not - but as indicating the context of the background to Mr Rogers' submissions and providing support for them in that way.

11. Mr Rogers relied upon three main grounds. It is helpful to indicate them since, as will be seen, there are aspects and relevant considerations that overlap. The first, that the provisions for appeal in the present appeal are governed by O69, r.4 of the Rules of the Supreme Court and that the time limit specified in s.79(1) of the Trade Marks Ordinance is now defunct by reason of the change of procedure since the introduction of the new Rules of the Supreme Court in 1967, alternatively that the time limit in the Trade Marks Ordinance has been satisfied. Second and alternatively, that since the passing of the Supreme Court Ordinance 1976 there are now two separate and parallel rights of appeal to the Court of Appeal, one under the Supreme Court Ordinance and the other under the Trade Marks Ordinance, either of which may be resorted to. Third and alternatively that the provisions of s.79(1) of the Trade Marks Ordinance have been repealed by the passing of the Supreme Court Ordinance and/or the enactment of the Supreme Court Rules.

12. Beginning then with the first ground, Mr Rogers submits that the commencement contemplated by s.79(1) at the time of its enactment in 1954 was the filing of a notice of appeal; whereas under the Rules of the Supreme Court since 1967, commencement is effected by service upon the respondent. Therefore his submission goes, the provision for time i.e. the 21 day period prescribed by s.79(1), can have no application under the current procedure. The only similar provision in the law of Hong Kong, he submits, is s.98(2) of the Bankruptcy Ordinance (Cap.6) which is in virtually identical terms to those of s.79(1). He submits that the time for appealing and the relevant procedure in the context of the Bankruptcy Ordinance and the Rules of the Supreme Court lends strong support to the construction he contends for. However, s.100(4) of the Bankruptcy Ordinance confers express power upon the Court to extend time; there is no such provision in the Trade Marks Ordinance. Likewise s.99 expressly applies the rules and practice of the Supreme Court so far as not inconsistent with the Bankruptcy Ordinance to bankruptcy proceedings; neither is such provision to be found in the Trade Marks Ordinance. In the result it is difficult to see what assistance in construction can be derived from the similarity relied upon.

13. This ground, like the third ground, was not directly put to Litton J.A., but it appears to have been touched upon in its effect as impliedly repealing s.79(1). Litton J.A. dealt with the point at page 8 of his judgment in the following way:

"It is of course only in the clearest 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 [1891]2 QBD 267 at 272."

We would respectfully agree. Moreover s.28(b) of the Interpretation and General Clauses Ordinance (Cap.1) which reflects obviously sound principles, provides that "no subsidiary legislation" which by definition includes rules of court "shall be inconsistent with the provisions of any ordinance". Of course it would be possible for subsidiary legislation to derive its authority from an ordinance in sufficiently specific terms as to prevail over the provisions of some other ordinance by necessary implication or being sufficiently specific or express (see Mohan v McElney [1983] HKLR 308 at 312H - J per Cons J.A., as he then was); there is no such provision here. Therefore O59, r.4(1)(c) cannot have effect that is clearly inconsistent with s.79(1).

14. Furthermore, s.79(1), being the most specific provision, would not be displaced by the general provisions of O59, r.4(1)(c) albeit later (see Kirby v North British and Mercantile Insurance Co. [1896]2 QB 99 (CA) at 102, 103 per Kay L.J.)

15. We are therefore not able to see any merit in the main part of Mr Rogers' first ground. Turning to its alternative and subsidiary aspect, it is plain on its face that the submission, that the requirement to commence the appeal was satisfied on the 10th July 1992 by the appellant's solicitors requesting the Registrar of Trade Marks to take no steps to register the appellant's mark pending the outcome of the appeal and copying the letter to the respondent, is untenable. At best it might be argued that such a letter to the respondent would indicate an intention to appeal.

16. We turn then to Mr Rogers' second ground i.e. that the introduction of the new Supreme Court Ordinance in 1967 introduced a new right of appeal in all cases where the High Court was exercising an appellate jurisdiction and the appellant is entitled to make use of the new right.

17. In his judgment, Litton J.A. held that the legislature could not have intended that there should be two separate sources of jurisdiction in respect of appeal to the Court of Appeal from decisions of the High Court i.e. one under the Trade Marks Ordinance and the other under the Supreme Court Ordinance. He added "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." Mr Rogers submits that it is no answer to say that it would be a recipe for chaos to have two separate sources of jurisdiction. We cannot say we agree; but little turns upon the point. Mr Rogers adds that it would be very strange if all the rules of O59 were to apply to appeals from the High Court on trade mark application matters except r.4. Again, we are not able to agree; in any case if that is the true and proper construction of s.79(1), then effect must be given to it.

18. Mr Rogers goes on to submit that that there can be two parallel statutory rights of appeal with two different time limits is exemplified in The Queen v Justices of Glamorganshire 22 QBD 628 at 630. We do not find that authority or analogy of assistance. The two modes of procedure referred to there, were in the words of Lord Coleridge C.J. "expressly kept alive". There are no such express provisions here. Moreover if the true and proper construction of the two provisions is that the more specific in s.79(1) is to apply, the possibility that two parallel statutory rights of appeal can be provided for by express provision is of no relevance. For the like reasons we do not find Stewart v Jones 1852 LJQB NS 1, or R. v. Bridge 24 QBD 609, upon which Mr Rogers relied, of assistance.

19. Finally we turn to Mr Rogers' third ground i.e. that s.79(1) has been repealed by the Supreme Court Ordinance and the making of the Rules of the Supreme Court. As in the case of his first ground, this also was not put to Litton J.A. However, no point has been taken as to that. Mr Rogers submits that s.54 of the Supreme Court Ordinance confers a very broad power on the Rules Committee to make rules concerning practice and procedure "in all causes and matters whatsoever in or with respect to which the Supreme Court has jurisdiction". O59, r.4(1) is a rule of court "regulating and prescribing the procedure ... and practice to be followed". It is a rule of practice and procedure, he submits, because its function is to regulate the machinery of litigation, and it does so without conferring or removing, altering or diminishing any existing jurisdiction or any existing substantive rights or duties (Mitchell v Harris [1967]2 QB 703; Mohan v McElney). Section 54 of the Supreme Court Ordinance, he submits was enacted precisely to confer on the Rules Committee the power to prescribe the practice and procedure "in all cases". There is no principle of law that prevents a statute from conferring power by subordinate legislation to amend earlier legislation although the courts may construe such a power narrowly (R. v. Secretary of State for Social Security ex p Britnell [1991]1 WLR 198 at 204F; Aden Refinery Co Ltd v Ugland Management Co Ltd [1987] QB 650 at 655C - F).

20. Again, the foregoing submissions do not avail Mita. If the true and proper constructions of the provisions in question is that the most specific s.76(1) prevails, it is of no assistance that the provisions of the Supreme Court Ordinance and of the Rules could have been so specifically and expressly framed as to effect the repeal of s.76(1), if it is found that that has not been done.

21. In deference to counsel's carefully prepared submissions, we have dealt with the foregoing submissions in some detail. However, we feel bound to say that we have found no difficulty in construing the two provisions in the same way as Litton J.A. Their meaning and effect seem to us to be sufficiently plain and not to require any reference to their historical context and the authorities, little of which we have found to be needed or to be of assistance.

22. In our view it follows, as Litton J.A. held, that 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; and that therefore O3, r.5(1) of the Rules of the Supreme Court is plainly not applicable. It is therefore not necessary to address Mr Rogers' submissions on the exercise of discretion under O3, r.5(1). That said, we would add that, had that rule been applicable, we would not have dissented from the way in which Litton J.A. indicated he would have exercised his discretion. In our view the lack of jurisdiction to extend time is not only unsatisfactory but potentially unjust; we would urge an early review of it by the legislature.

23. For the reasons we have endeavoured to give, we dismiss the appeal and make an order nisi that the respondent has its costs of the appeal and of the summons before Litton J.A., certified for two counsel.