On 24 March 2016 the SA Supreme Court of Appeal (SCA) handed down a judgment that, although purely procedural in nature, clarifies an important issue regarding trademark oppositions. The case: Adcock Ingram Intellectual Property v Actor Holdings. The issue: can the Registrar extend the three-month term within which a notice of opposition must be filed if the request for the extension is only filed after the three-month period?
The facts were interesting. Adcock Ingram had mistakenly allowed a registration for the trademark Lentogesic to lapse, and Actor had then applied to register the same trademark. Actor’s later application was advertised and no opposition was filed within the three-month term. When Adcock Ingram became aware of the later application and the lapse of its own registration it requested an extension of the opposition term. Actor argued that Adcock Ingram was not entitled to an extension because the three-month term had already expired.
The SCA had no difficulty with this one. The judge said this:
• Section 21 of the Trade Marks Act says that anyone can file an opposition within three months of the advertisement, or such further period as the Registrar may allow;
• Section 45(3) says that the Registrar may extend any time period ‘either before or after its expiration’, except in those cases where it’s clearly stated that the Registrar can’t do so;
• This isn’t a case where it’s clearly stated that the Registrar can’t grant an extension after expiration of the period, so it must follow that he can.
This decision will have significant impact on trademark practice.
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