Supreme Court allows appeal against trademark refusal, ruling time limit starts from Controller's decision date.

THE SUPREME COURT

200/02

McGuinness J.

Geoghegan J.

McCracken J.

IN THE MATTER OF THE TRADE MARKS ACT, 1963

AND IN THE MATTER OF THE TRADE MARKS ACT, 1996

AND IN THE MATTER OF AN APPLICATION PURSUANT TO THE TRADE MARKS ACT, 1996 BY THE PROCTOR AND GAMBLE

COMPANY DATED THE 2 OCTOBER, 1995 FOR REGISTRATION OF A THREE DIMENSIONAL MARK IN THE SHAPE OF A BAR OF

SOAP IN CLASS THREE OF THE REGISTER OF TRADE MARKS

BETWEEN

THE PROCTOR AND GAMBLE COMPANY

Plaintiff / Respondent

and

THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS

Defendant / Appellant

JUDGMENT of Mr. Justice McCracken delivered on the 4th day of June, 2003

Background

On 2nd October, 1995 the respondent applied to register in part A of the Trade Mark Register a three dimensional mark consisting of

the shape of a bar of soap. Following the coming into force of the Trade Marks Act, 1996, by letter dated 11th July, 1996 the

respondent requested that the application be determined under the 1996 Act. On 21st May, 1998 the respondent was advised that

the applicant (hereinafter called “the Controller”) was objecting to the application and on 5th November, 1999 an oral hearing took

place before a hearing officer at which the respondent made a number of submissions. By letter dated 25th November, 1999 the

Controller notified the respondent of his decision in the following terms:-

“Trade Mark application number 95/6880

Dear Sir,

With reference to the above numbered Trade Mark Application and to the hearing held on 5 November 1999, at which the

applicant was represented by Ms. Brenda O’Reagan, you are hereby notified pursuant to Rule 27 of the Trade Mark Rules 1996

that the application is refused.

If the applicant does not request the written grounds of the Controller’s decision in this matter within one month of the date

of this letter the application will be abandoned and removed from the pending list.

Yours faithfully”

The respondent duly requested the written grounds of the Controller’s decision, and was furnished with these grounds on 24th

January, 2000.

On 17th April, 2000 these proceedings were issued by way of an appeal from the Controller’s decision. A preliminary issue has now

arisen as to whether these proceedings were taken within the statutory period for appeal.

Procedural point

The learned trial judge in purported reliance on s. 79(3) of the Trade Marks Act, 1996 certified four points of law for appeal to the

Supreme Court. A question has been raised before this court as to whether it was necessary for the learned trial judge to so certify,

or whether there is in fact an automatic right of appeal to the Supreme Court on a preliminary point such as that which has been

raised in these proceedings. To resolve this it is necessary to examine the provisions of s. 79(1) and s. 79(3). These read as follows:-

“79(1) Unless otherwise provided by Rules of Court, within the period of three months from the date of a decision of the

Controller under this Act, an appeal shall lie from the decision to the court.

(3) By leave of the court an appeal from a decision of the court under this section shall lie to the Supreme Court on a

specified point of law.”

The requirement of obtaining leave of the High Court for an appeal to this court is therefore only in relation to “an appeal from a

decision of the court under this section”. The only decision under s. 79(1) is a decision in relation to an appeal from a decision of the

Controller. The decision on the preliminary point, which is the subject of this appeal, is not an appeal from a decision made under s.

79 as this was not in any way related to an appeal before the High Court from the decision of the Controller under the Act. It was,

therefore, unnecessary for the learned High Court judge to certify any specified point of law. This procedural point, of course, does

not in any way effect the substantive issue before this court, but it is in the interest of all parties to Trade Mark Applications that the

matter should be clarified.

The Controller’s argument

The Controller argues that the provisions of s. 79 are quite clear, and provide an absolute time limit for bringing an appeal. The only

way in which that time limit can be extended is by specific rules of court allowing such extension. No rules have been made under s.

79 and therefore there can be no extension of the three month period.

The Controller also argues that “the date of a decision of the Controller” referred to in s. 79 must be the date of the original decision

to refuse the application, and not the date on which the written grounds of the decision were given. On that basis, this appeal must

be out of time.

The respondent’s case

The respondent accepts that there are no specific provisions in the 1996 Act or in the rules made under that Act which would allow

an extension of time. However, it also argues that the reference in s. 79 to “unless otherwise provided by rules of court” is not a

reference to rules specifically made by reference to the 1996 Act, but refers to rules of court in general. The existing rules of court,

which predate the 1996 Act, do make provision for an extension of time. Order 94 r. 45, which applies to all appeals from an order or

decision of the Controller, provides that such appeal shall be made by special summons and r. 47 then provides:-

“The summons shall be issued within one calendar month from the date of the order or decision of the Controller, or the

Award of the Arbitrator (as the case may be) appealed against, or within such further time as the Controller may have allowed

for the purpose.”

They further argue that, because time limit and the discretion given to the Controller is given by a rule of court, time may also be

extended pursuant to Order 122 r. 7 which provides:-

“The court shall have power to enlarge or abridge the time appointed by these rules or fixed by any order enlarging time, for

doing any act or taking any proceeding, upon such terms (if any) as the court may direct, and any such enlargement may be

ordered though the application for the same is not made until after the expiration of the time appointed or allowed.”

The applicant argues that the time limit of one month under Order 94 r. 47 is a time appointed by the rules, and therefore may be

extended by the court.

As an alternative, the respondent argues that the reference in s. 79 to “the date of a decision of the Controller” is in fact a reference

to the giving of the written grounds. While an applicant must apply for the written grounds of a refusal within one month of the

notification of the decision to refuse, there is no statutory time limit within which the Controller must in fact give the written grounds.

The purpose of written grounds for the decision is to allow an applicant to decide whether it ought to appeal, but in fact if the

written grounds were not given until after the three month period had expired, it would be impossible for an applicant to make that

decision. It is argued that the intention must have been that the three month period would only start to run on the delivery of the

written grounds by the Controller. The respondent also points to Order 94 r. 46 of the Superior Courts Rules, which of course again

preceded the 1996 Act, but which provided that the summons by which the appeal is made shall state concisely the grounds of

appeal, and no grounds other than those stated shall be allowed to be argued at the hearing except with the leave of the court. If

this rule still applies, it would be impossible to formulate grounds of appeal without having seen the written grounds for refusal.

Relevance of Order 94 r. 47

This rule would seem, on the face of it, to apply to all appeals to the court from an order or decision of the Controller including, but

not limited to, appeals from orders or rulings made in relation to Trade Mark Applications. The order also applied to proceedings under

the Patents Legislation, the Copyright Legislation and Legislation relating to Registered Designs. It provides that the summons shall be

issued within one calendar month from the date of the order or decision of the Controller or within such further time as the Controller

may have allowed. However, s. 79 of the Trade Marks Act, 1996 allows a period of three months from the date of the decision of the

Controller within which an appeal may be taken. Not only is the rule inconsistent with the express provisions of the 1996 Act, but it is

also inconsistent with the provision of the Trade Marks Act, 1963 which provides at s. 57(6) that except by leave of the court no

appeal against a decision of the Controller shall be made save within a period of two months from the date of dispatch of the

statement of grounds or such further period not exceeding three months as the Controller may allow.

If the respondent’s argument is correct, and r. 47 does apply to the present circumstances, then in effect the rule overrides the

statutory provision. As I have already pointed out this is a general rule applying to all orders and decision of the Controller, and not

specifically to Trade Mark Applications.

There are occasions in which statutory provisions may be amended by statutory instrument, but such instances only occur where

there is specific statutory authority to that effect. If the respondent’s argument is correct, the Superior Court Rules of 1986 in fact

amended s. 57 of the Trade Marks Act, 1963. This quite clearly was not so. Under s. 3 and s. 44 of the 1963 Act, the Minister for

Industry and Commerce as he then was, was empowered to make certain rules, under strict conditions, including the laying of such

rules before each of the Houses of the Oireachtas. It contains no provision relating to rules of court, which of course are made by the

Superior Courts Rules Committee pursuant to various Courts Acts. Any rule of court which purported to amend a statutory provision,

without statutory authority, would clearly be ultra vires.

A further problem facing the respondent is that, if it is correct, not only did the rules of court purport to amend the 1963 Act, but

they have nullified the effect of s. 79 of the 1996 Act. If the time limit which the respondent says applies is that under the rules of

court, then there is only a period of one month within which to appeal. This is a quite unstateable argument which would in effect be

limiting the powers of the Oireachtas to time limits set out in rules of court. The three month time limit set out in s. 79, being a

statutory provision, must take precedence over any previous rules of court.

If follows that if Order 94 r. 47 does not apply, then the court has no power to extend the time under Order 122 r. 7, as that rule only

gives the court a general power to enlarge or abridge the time “appointed by these rules or fixed by any order enlarging time”. If the

time is fixed by s. 79, and not by the rules, then Order 122 has no relevance, and as there are no rules of court providing otherwise,

the time limit set out in s. 79 are those which apply.

It should be said that under s. 81 of the 1996 Act, the Minister is empowered to make rules prescribing time limits for anything

required to be done in connection with any proceedings under the Act, but he has not chosen to do so, and therefore there appears

to be no statutory provision which allows for an extension of the three month period under s. 79, either by the Controller or by the

court.

The date of the decision of the Controller

There certainly appears to be a lacuna in the Act by reason of the fact that there is no time limit within which the Controller must

give his written grounds. A situation could, therefore, arise whereby the three month time limit would have expired before the

applicant received the written grounds. This clearly is not what was intended by the Act, nor indeed is what occurred in the present

case.

Unlike the 1963 Act, the 1996 Act does not specifically provide for the furnishing of written grounds for his decision by the Controller.

This is in fact dealt with by r. 27 of the Trade Mark Rules, 1996 which provides:-

“(1) The decision of the Controller in the exercise of any discretionary power following a hearing before him or her shall be

notified to the party or parties concerned.

(2) A written statement of the grounds of a decision under paragraph (1) shall be furnished if application, accompanied by the

prescribed fee, is made to the Controller by a party to the hearing within one month from the date of notification of the

decision.”

It follows that, under the Act, the only decision referred to is that of the Controller to refuse the application. It is not permissible to

construe a section of the Act by reference to rules made under that Act, and therefore the only construction that can be put on the

word “decision” is that it refers to the original decision of the Controller.

Even if one could look to the rules for assistance, they quite clearly provide for two stages in the appeal process. Firstly there is the

decision of the Controller which must be notified to the party or parties concerned, and secondly there is a written statement of

grounds of a decision, which written statement is only furnished if it is sought by a party to the hearing. If no written grounds are

sought, there has still been a decision of the Controller, and the date of that decision is the date on which it was made.

Conclusion

I am quite satisfied that the time limit for appealing a decision of the Controller under

s. 79 of the Trade Marks Act, 1996 is an absolute time limit, and in the absence of any further statutory provision or rules made by

the Minister under the Act, there is no power or discretion, either in the court or the Controller, to extend such time limits. I am

further satisfied that the only possible construction that can be put on the section in relation to the commencement of the time is

that it must commence on the date that the decision was given by the Controller, and not on the date the written grounds were

furnished. There is in fact no obligation on an applicant who wishes to appeal to obtain written grounds, and the appeal may be taken

at any time within the three month period, whether written grounds have been obtained or not.

Finally, although it was not a point relied on to any degree by the respondent, I should comment on the finding of the learned trial

judge at the end of his judgment. The notification of the Controller’s decision on 23rd November, 1999 provides that should there not

be a request for written grounds within one month, “the application will be abandoned and removed from the pending list”. The

learned trial judge held that this prevented the decision which was notified from being a final decision, as in effect it treated the

application as still pending after the one month period where a statement of grounds is applied for. I cannot agree with this

construction, as quite clearly the application is not abandoned and could not be removed from the pending list until the time for an

appeal had expired, that is for three months from the date of the decision. In any event, it seems to me that that statement is not

now correct, because, as already stated, under the 1996 Act there appears to be no obligation to apply for written grounds before

appealing, and therefore, even if no such application is made, there may still be an appeal within the three month period provided by

s. 79.

Accordingly, I would allow this appeal.