The Trade Marks Act makes provision for a trade mark application to be examined and thereafter advertised provided it is accepted by the Trade Mark Registrar to afford interested third parties the opportunity to oppose registration. The opposition period is three months from the date of advertisement and an extension of three months is available on request. A further extension by agreement between the parties is also available.
In the case of Adcock Ingram Intellectual Property (Pty) Ltd & Adcock Ingram Healthcare (Pty) Ltd (the Opponents) v Actor Holdings (Pty) Ltd (the Trade Mark Applicant), the first Court hearing the litigation found that the Opponents were not entitled to apply for condonation (forgiveness, in laymans terms) for the late opposition to the registration of the LENTOGESIC trade mark in class 5 filed by the Trade Mark Applicant. The important question was whether the Act and its Regulations give the Registrar a discretion to extend the opposition period before or after the expiration of the related time limits. The Court ruled that once the time limit has expired it cannot be extended.
On appeal, the Supreme Court found that that “the Court a quo committed a cardinal error, which led to its misinterpretation of the Registrar’s powers, by impermissibly using regulations (which it incidentally also misconstrued), in particular regulation 52, as an aid to interpret the provisions of the Act”. Furthermore, “the Act vests the Registrar with ‘all such powers and jurisdiction as are possessed by a single judge in a civil action’ in connection with any proceedings before her. She is obviously enjoined to exercise her discretion lawfully in considering an extension application”.
Accordingly, the Supreme Court of Appeal has confirmed that the Trade Marks Act empowers the Registrar of Trade Marks to condone the late filing of opposition to an application for the registration of a trade mark and extend the three month period prescribed for the filing of opposition.
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