SCA judgment in respect of Adcock Ingram Intellectual Property (Pty) Ltd v Actor Holdings (Pty) Ltd

The Supreme Court of Appeal (“SCA”) has recently handed down judgment in the case of Adcock Ingram Intellectual Property (Pty) Ltd v Actor Holdings (Pty) Ltd, where the SCA overturned the judgment made by the court a quo in which that Court was said to have committed a cardinal error in misinterpreting the powers of the Registrar of Trade Mark.

The court a quo held that the effect of Regulation 52(1) (of the Regulations to the Trade Marks Act, 194 of 1993) was to preclude the Registrar from withholding the issue of the certificate of registration pursuant to a request made after the prescribed period of three months. Therefore, once the initial three month opposition term has expired, the court a quo reasoned that Section 45(3) of the Act, read with regulations 52(1) and (3), did not afford the Registrar  any discretion as to whether or not to condone the late filing of an opposition.

The SCA firmly stated that the court a quo misinterpreted the Registrar’s powers by using regulations to aid in an interpretation of the provisions of the Act. Sections 21 and 45(3) of the Act contain express wording which places no limitations on the Registrar’s discretionary power to extend the opposition term, either before or after the expiration of the term.

The SCA’s decision is sure to be met with concurrent sighs of relief, given the fact that if the court a quo’sdecision was left standing, it would have had far reaching consequences.

The SCA’s judgment now leaves no doubt that the Registrar has an absolute discretion when it comes to extending deadlines or condoning late oppositions.

Gillian Griffiths

Associate
Trade Mark Attorney
Email gilliang@kisch-ip.com
Tel +27 11 324 3020