Adcock Ingram Intellectual Property (Pty) Ltd and Another v Actor Holdings (Pty) Ltd (57255/2013) [2014] ZAGPPHC 306; 2014 BIP 191 (GP) (27 May 2014)

Adcock Ingram Intellectual Property (Pty) Ltd and Another v Actor Holdings (Pty) Ltd (57255/2013) [2014] ZAGPPHC 306; 2014 BIP 191 (GP) (27 May 2014)

The court held that the Registrar of Trade Marks does not have the power to condone the late lodging of opposition to a trade mark registration after the expiry of the prescribed period. Section 29(1)(a) of the Trade Marks Act is clear that the Registrar must register the trade mark if no opposition is lodged within the time prescribed. Regulation 52(1) allows for an extension of the opposition period only if requested before expiry, and this is an express limitation. Regulations 52(2) and (3) do not provide authority for condonation of late opposition to trade mark registration, as they relate to other time limits under the Act. Allowing condonation after expiry would undermine the...

Citation
[2014] ZAGPPHC 306
Parties
Respondent: Adcock Ingram Intellectual Property (Pty) Ltd; Respondent: Adcock Ingram Healthcare (Pty) Ltd; Applicant: Actor Holdings (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
27 May 2014
Case Number
57255/2013
Procedural Posture
Civil Application / Application for Condonation of Late Opposition to Trade Mark Registration
Outcome
Application for condonation dismissed; costs awarded against the Objectors.
Judges
LI Vorster
Legal Topics
Trade Mark Opposition, Condonation, Extension of Time, Trade Marks Act, Regulatory Compliance
Intellectual Property Civil Procedure Trade Mark Opposition Condonation Extension of Time Trade Marks Act Regulatory Compliance

Case Brief

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Parties

Adcock Ingram Intellectual Property (Pty) Ltd

Respondent

Adcock Ingram Healthcare (Pty) Ltd

Respondent

Actor Holdings (Pty) Ltd

Applicant

Procedural Posture

Civil Application / Application for Condonation of Late Opposition to Trade Mark Registration

Legal Issues

  1. 1 Whether the Registrar of Trade Marks has the power to condone the late lodging of opposition to a trade mark registration after the expiry of the prescribed period.
  2. 2 Whether Regulation 52(2) and (3) of the Trade Marks Regulations permit extension of the opposition period after expiry.
  3. 3 Whether Section 45(3) of the Trade Marks Act authorizes condonation for late opposition to trade mark registration.

Ratio Decidendi

The court held that the Registrar of Trade Marks does not have the power to condone the late lodging of opposition to a trade mark registration after the expiry of the prescribed period. Section 29(1)(a) of the Trade Marks Act is clear that the Registrar must register the trade mark if no opposition is lodged within the time prescribed. Regulation 52(1) allows for an extension of the opposition period only if requested before expiry, and this is an express limitation. Regulations 52(2) and (3) do not provide authority for condonation of late opposition to trade mark registration, as they relate to other time limits under the Act. Allowing condonation after expiry would undermine the...

Court Disposition

Application for condonation dismissed; costs awarded against the Objectors.

Orders

  • The application for condonation by the Objectors is dismissed.
  • The Objectors are ordered to pay the costs of the Trade Mark Applicant.