Re BRISTOL-MYERS SQUIBB CO.

HEADNOTE

Administrative Law - Practice & Procedure - Judicial Review of decision of Registrar of Trade Marks whereby an extension of time within which to file a Notice of Opposition was granted - whether decision maker should be satisfied that extension seeker had given a satisfactory or adequate explanation for delay - HELD: As no explanation given decision quashed.

THE JUDGE HAS AUTHORISED PUBLICATION OF THIS JUDGMENT

1994, No. MP2125

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

MISCELLANEOUS PROCEEDINGS

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J U D G M E N T

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1. On 8th August 1994, Liu J. gave leave to the Applicants (Bristol-Myers) to apply for judicial review of a decision of T.H. Grant acting for the Registrar of Trade Marks (The Registrar) whereby she granted F.H. Faulding & Co. Ltd. (Faulding) an extension of time within which to file a notice of opposition to Bristol-Myers' application to register "TAXOL" as a trade mark.

2. An unusual feature of this application is that neither the Registrar nor Faulding, both of whom were properly served, have elected to take part in the hearing. I have therefore only heard argument on behalf of Bristol-Myers. The Attorney General had the courtesy to contact the solicitors of Bristol-Myers and indicated that he did not intend to appear and extracted an agreement from Bristol-Myers that they would not seek costs against the Attorney General acting for the Registrar.

3. Pursuant to S.14 of the Trade Marks Ordinance and the Trade Marks Rules, once the trade mark application has been accepted by the Registrar, the Applicant must advertise it in one issue of the Gazette. There is a two month period within which any person may give notice of opposition to the registration (S.15(1)) of the Ordinance and Rule 23(1) of the Rules.)

4. Once the two month period has expired without anyone filing a notice of opposition, the Registrar must register the trade mark, unless the application has been accepted in error or the Governor otherwise directs (the Ordinance S.17(1)).

5. It is possible for the two month opposition period to be extended, pursuant to Rule 91 of the Trade Marks Rules which provides:-

"If in any particular case, the Registrar is satisfied that the circumstances as such as to justify an extension of the time for doing any act or taking any proceedings under these rules ... he may extend the time for so doing upon such terms as he may direct, and shall give notice thereof to other interested parties. The extension may be granted though the time has expired for doing the act or taking the proceedings in question."

6. Mr. Garland, who appears for Bristol-Myers, submits that it is clear from the terms of Rule 91 that every application for extension of time has to be examined upon its own particular facts and that circumstances must exist such as to justify an application for an extension of time.

7. It is important to refer to the basic chronology.

8. The decision runs to some 15 pages most of which is taken up with setting out various arguments put forward by those appearing for the respective parties. The Registrar decided that the grounds on which the opponent proposed to oppose registration of the Applicant's mark was not frivolous or vexatious and that finding is not challenged in these proceedings. The relevant part of the decision appears in para. 14 which I think I should set out:-

"In exercising my discretion to allow an extension of time I took into account that the TAXOL application was advertised on 5th November 1993 and that under rule 23 the opponent had two months until 5th January 1994 to file a notice of opposition. Whether or not the opponent knew of the TAXOL application before early December it is clear the opponent did not know the application had been advertised. The opponent's solicitors were instructed to conduct a search in the Registry. The search was made on 7th December, five days after the writ in the applicant's action against Vantone for passing off was served.

Thereafter the opponent's solicitors searched the Gazette and wrote to the Registry to ask about the status of the application. The steps taken by the opponent to keep itself informed failed and the opponent did not find out until 25th March 1994 that the application had been advertised. I considered I should not refuse the opponent's application for extension of time merely because the opponent had failed to keep itself informed. The opponent took four days, after it knew of the advertisement, to apply for an extension of time for filing a notice of opposition. In the circumstances I considered that making an application for extension of time, two months and twenty four days outside the time allowed by rule 23, did not amount to substantial delay."

9. Mr. Garland accepted that applications to extend time under Rule 91 involve similar considerations to those governing extensions of time under Ord. 3 r.5 of the Rules of Supreme Court. He referred to the notes which appear at para. 3/5/1 of the Annual Practice. He also accepted that the principle in the case of Atwood v. Chichester 3 QBD 722 is relevant, subject to the amplification (if any) which can be drawn from Revici v. Prentice Hall [1969] 1 AER 772 and Regalbourne Ltd. v. East Lindsey District Council [1992] C.O.D. 493; & [1993] C.O.D. 297 (The latter reference is to the Crown Office Digest.)

10. It is quite clear that the Registrar in coming to her decision took into account the case of Atwood v. Chichester but no reference was made to Revici. In Revici the Plaintiff was a resident in New York and he commenced libel proceedings in New York in 1965. The action was struck out and this ruling was upheld. Later he issued a writ in England and sought leave to serve the English Proceedings out of the jurisdiction on the 3rd Defendant, an American corporation. Master Jacob refused leave to serve out of the jurisdiction on 5th April 1968. It was agreed that the Plaintiff should have six weeks to consider whether to appeal and this was extended a further five weeks; subsequently on 19th July, four weeks after the Court extension had expired, the Plaintiff served his notice of appeal. On 12th November, the Judge refused to extend the time for appealing and the Court of Appeal consisting of Lord Denning, M.R., Edmund Davies and Widgery L.JJ. held there would be no extension for the time for appealing because "the Rules of the Court must be observed and it mattered not that the Plaintiff had offered to pay the costs and that no injustice would be done to the other side." It was further held that if there was non compliance with the rules it must be explained.

11. At p.774 Lord Denning said this:-

"Counsel for the plaintiff referred us to the old cases in the last century of Eaton v. Storer and Atwood v. Chichester, and urged that time does not matter as long as the costs are paid. Nowadays we regard time very differently from what they did in the nineteenth century. We insist on the rules as to time being observed. We have had occasion recently to dismiss many cases for want of prosecution when people have not kept to the rules as to time. So here, although the time is not so very long, it is quite long enough. There was ample time for considering whether there should be an appeal or not. (I should imagine it was considered.) Moreover (and this is important), not a single ground or excuse is put forward to explain the delay and why he did not appeal. The plaintiff had 31/2 months in which to lodge his notice of appeal to the judge and he did not do so. I am quite content with the way in which the judge has exercised his discretion. I would dismiss the appeal and refuse to extend the time any more."

12. A little further down the same page Edmund Davies L.J. said this:-

"The notice of appeal herein submits (in effect) that that question calls for an affirmative answer, certainly in cases where it is not shown that the other side have suffered irreparable damage as a result of the delay. I disagree. On the contrary, the rules are there to be observed; and if there is non-compliance (other than a minimal kind), that is something which has to be explained away. Prima facie, if no excuse is offered, no indulgence should be granted."

13. Mr. Garland submits that although the decision in Atwood appears to be criticised in the passages I have just quoted he submits that, on a proper reading of the case, it is by no means inconsistent with Revici. The famous dictum of Bramwell L.J. which appears at p.723 of the report in Atwood, is referred to in para. 3/5/1 of the White Book and in para. 18 of the Registrar's decision and it states as follows:-

"When sitting at chambers I have often heard it argued that when irreparable mischief would be done by acceding to a tardy application, it being a departure from the ordinary practice, the person who has failed to act within the proper time ought to be the sufferer, but that in other cases the objection of lateness ought not to be listened to, and any injury caused by the delay may be compensated for by the payment of costs."

14. Mr. Garland submits that one cannot get out of that passage anything which suggests that the extension seeker does not first need to provide an adequate explanation for the delay. He points out if that is the way in which that dictum has to be read then it would appear to be inconsistent with the majority, because at p.724 Brett L.J. said:-

"Now, if it could have been shown that the object of the writ was at the time of service explained to her, she could not at this stage of the proceedings have been permitted to defend after suffering judgment by default."

15. At p.725 Cotton L.J. said:-

"I should have thought that if the defendant had lain by intentionally, she could not be now allowed to appear ..."

16. It also worth pointing out that in Atwood an adequate explanation for delay had in fact been given and was accepted.

17. I am quite satisfied that the decision in Atwood is consistent with the decision in Revici and that both require that an extension seeker should provide an explanation for delay. If it were otherwise a party could completely ignore the relevant proceedings and seek an extension long out of time and contend that costs were a suitable remedy. I cannot believe that that is, or should be, the law. In the Regalbourne case which is a decision of the Court of Appeal presided over by Sir Thomas Bingham M.R. on the 24th February 1993, the Court heard an appeal against a decision of Potts J. whereby he refused an application by the appellant for extensions of time in which to lodge appeals to the Court against decisions of a Valuation Tribunal. In the note of the judgment which appears in the Crown Office Digest one finds the following:-

"In the absence of agreement the court normally needed to be satisfied that there was an acceptable explanation for the delay. The fact that lawyers had been unaware of the relevant time limit, or had found it difficult to comply with it because of other commitments such as holidays or other work, was unlikely to amount to an acceptable explanation. In the absence of an acceptable explanation the question of prejudice was unlikely to arise and, even if there was an acceptable explanation, the court might refuse to exercise its discretion to extend time if the delay was substantial or if to do so would cause significant prejudice to the respondent."

18. I am therefore quite satisfied that in the present case it was incumbent upon the extension seeker to first satisfy the Registrar that there was an explanation as to why the generous two month time limit had not been complied with.

19. Mr. Garland submits that the decision was wrong in law in that it took no account to the fact that Faulding had given no satisfactory explanation for its delay. He pointed out, quite correctly, that it was clear from about the 8th December 1993 (still nearly one month before expiry of the time limit for filing a notice of opposition) that Faulding's solicitors knew that an application had been or would be made. What he submits they should have done was perfectly obvious namely to look back through the Gazette. Had they taken the simple precaution they would have found Bristol-Myers' advertisement in the 5th November issue. They could have also asked at the public search desk at the Trade Marks Registry.

20. By the 5th January 1994, Faulding's solicitors knew that the notice to advertise had been issued. In the fact this means the application would either have been advertised by then or would be advertised very shortly. Mr. Garland submits that it is incredible and surprising that Faulding's solicitors took no steps in December 1993 nor in January 1994 to check the Gazette. Instead they wrote to the Registrar on the 9th March 1994, more than two months after being told that notice to advertise had been issued, asking when the application was advertised. He then points out, again correctly, that by the 25th March 1994, they had done what they should have done in December 1993, namely search the Gazette and they found the 5th November 1993 advertisement.

21. I am quite satisfied that Mr. Garland's submission is correct when he submits that nothing approaching a satisfactory or adequate explanation for the delay was ever advanced by Faulding. All that Faulding submitted was an account of the time scale involved. No attempt was made by them to explain why no search had been carried out in December 1993 or January 1994. All the solicitors apparently did was to keep a watch on the new issues of the Gazette. There is no suggestion that the responsible people at Faulding's solicitors were ill or unable to carry out this simple task.

22. I am satisfied that had the Registrar appreciated that a satisfactory explanation for the delay should have been given, but was not given, the view could not have been formed that the circumstances were such as to justify an extension of time.

23. I am quite satisfied that the decision was wrong in law because the decision maker did not direct herself properly on the law. She should have directed herself that before exercising her discretion a satisfactory or adequate explanation for the delay had to be given. Had she done this, she would have found that there was no satisfactory explanation put forward and that in those circumstances, it could not have been a proper exercise of discretion to extend time. I am quite satisfied that the decision is wrong in law, and I do not think I have to go on to consider whether the decision was unreasonable in the Wednesbury sense. It suffices to conclude that the decision was wrong in law and on that ground I propose to set aside the decision.

24. I will now hear Counsel for Bristol-Myers on a point that was not discussed in argument namely whether, having quashed the decision, I should now send the matter back to the Registrar for a decision in accordance with the law as I have endeavoured to set out in this judgment. Whatever order I make, there will be no order as to costs as that has been agreed with the Attorney General acting for the Registrar and as I have already made clear Faulding did not appear.