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In the Matter of The Registrar of Trade Marks and In the Matter of The Application of Seeto Kui (Holdings) Pty Ltd [2000] PGNC 1; N1926 (10 January 2000)

Unreported National Court Decisions

N1926

PAPUA NEW GUINEA

[NATIONAL COURT OF JUSTICE]

MP NO. 627 OF 1997
IN THE MATTER OF THE REGISTRAR OF TRADE MARKS
AND: IN THE MATTER OF THE APPLICATION OF SEETO KUI (HOLDINGS) PTY LIMITED
APPELLANT

Mount Hagen

Hinchliffe J
10 January 2000

APPEAL from refusal by the Registrar of Trade Marks to consider a Notice of Opposition to registration of two trade marks —Notice filed late — Trade Marks Act Ch. No. 385 does not provide for acceptance of late Notices of Opposition — Court has no discretion — Appeal dismissed.

Counsel

P. Ousi for the Appellant.

10 January 2000

HINCHLIFFE J: The Appellant is appealing against a decision of the Registrar of Trade Marks who refused to hear the Appellants Opposition to the registering of a trade mark submitted by another company. The Registrar in a letter to the appellant’s lawyers dated the 2nd August, 1997, which is annexure “G” to the affidavit of Linda April Dacre dated the 2nd December, 1997, reads, inter alia, as follows:

“We refer to your letter of 16 July 1997 giving Notice of Opposition to the above applications.

Please note that the acceptance of the applications were advertised in the Trade Marks Journal No 17 dated 27th March 1997. Under Section 40(1) of the Act the time allowed within which to lodge the Notice of Opposition expired on 27 June 1997.

The Notice of Opposition lodged which we received on 25 July 1997 is a month out of the prescribed time. We therefore, refuse acceptance of your opposition to the above applications.

The applications are at present proceeding to registration.

G. Araga

Registrar of Trade Marks”

The said Section 40(1) of the Trade Marks Act Ch. No 385 provides as follows:

“40. &#1oticeppositiosition

(1) & A persoperson may, within three months after the date of advertisemf theptance of an application for the registration of a trade mark, or within such furh further ther period as the Registrar, on application ma him n thet mentimentioned oned perioperiod, allows, give notice to the Registrar in the prescribed manner of opposition to the registration of the trade mark.”

There is no dispute that the appellant gave late notice. It was about a month out of time and no other application had been made prior to that to the Registrar by the appellant Company.

The lawyer for the appellant has submitted that the wording of the said Section 40(1) is not mandatory and that the Registrar has a discretion to accept late notices. I am unable to agree. I can find nowhere in the said Act that allows the Registrar to accept late notices of opposition and to my mind the said section is clear. There is no need to read words into it as that would be an example of the Court taking on a “legislative” role.

If it was the intention of the Parliament to allow the Registrar to accept late notices of opposition then the said Act would have provided for it. Clearly it does not, the said section is clear and simple in what it says.

It has also been submitted by the said lawyer that in accepting the formal notices of opposition and issuing a receipt for the filing fee, the Registrar is bound to consider the notices. Again I must disagree. That is purely an administrative act and that action does not override an Act of Parliament. Any way the signed receipt for K40 which is annexure “C” to Linda April Dacre’s said affidavit is clearly not the same signature as that of the Registrar. It was probably signed by a Clerk at the Investment Promotion Authority when the notices and money were handed over. That is not an unusual procedure and it would not be for the Clerk to decide whether or not to accept the said notices. That job is for the Registrar and he subsequently elected not to accept them.

I have also been asked to exercise my discretion under Section 155(4) of the Constitution but I again am unable to see why I should do so when the said Section 40(1) is quite clear to read. It makes sense.

It follows that the appeal must fail and also it seems that the appeal was misconceived in the first place when one considers Section 40(8) of the said Act which provides as follows:

“(8) ; A p who is aggs aggrievedieved by a decision of the Registrar under Subsection (6), may appeal to the Court.”

But subsection (6) actually refers e sitn when the Registrar has made a decision after coer considensidering the actual grounds for the opposition. Of course in this matter he never got that far and therefore to my mind the said subsection (8) of Section 40 was never available.

Having said all of that I am of the view that I should comment on Section 19 of the said Act, which provides, inter alia as follows:

“19. Prohibited

A mark mark . . .

(a) the use of which would be likely to deceive or cause confusion; or

(b) &&#160 useeof whof which woch would be contrary to law; or

(c)҈&ـ . p> .

shall not be registered as a trade mark.”

The said Section 19 indicthat mandatory that the Registrar is not to register a mark if it is likely to deceiveceive or e or cause confusion. That is exactly why the appellant is objecting in this case. On the face of it it could be said that it has an arguable case. I am of the view that the Registrar must look at other similar trade marks before he approves a new application to register a trade mark. He must do that whether or not a notice of opposition has been lodged. It would seem to me, in this case, that the Registrar may not have gone that far.

I say that because in his said letter of the 12th August, 1997 there is a suggestion that because the notices of opposition were refused consideration it meant that the applications automatically proceeded to registration. That is, as there were no objections, there was nothing to prevent the registration of the applications. To my mind there may well have been an error in the decision making process of the Registrar which may place him in contravention of the said Section 19. That of course is just a comment I make and whether the appellant wishes to take that up or not is something for the appellant and his lawyer.

As I said previously this appeal must fail and I make the following Order:

That the Appeal filed on the 8th December, 1997 is dismissed.

Order accordingly.

Lawyer for the Appellant: Warner Shand.