R v Registrar of Trade Marks, ex parte S.A.W. SA (a company)

Date

22 March 1996

Legislation

Trade Marks Rules 1986 r.114

Keywords

trade mark opposition; extension of time; evidence; trade marks rules; decision of registrar; judicial review

Counsel

Denese McFarland for S.A.W., H Whittle for the Registrar, David Kitchen QC for the Trade Mark Applicant

Solicitors:

Royds Treadwell for S.A.W.; Treasury Solicitors for the Registrar; Bird & Bird for the Trade Mark Applicant.

Judge:

Jacob J

Reported:

[1996] RPC 507

Court:

High Court (Queen's Bench Division)

Summary:

By a letter of 28 April 1995, Mr. Harkness, acting for the Registrar, refused an application by the opponents to a proposed Trade Mark registration for an extension of time to put their evidence in. The pleadings were closed on 20 June 1994. It was common ground that the time set by the rules for the opponents to put their evidence in started running on 29 June 1994 and expired on 29 December 1994.

The rule under which the Registrar was operating in this case was rule 114 of the Trade Marks and Service Marks Rules 1986 which stated as follows: "If in any particular case the Registrar is satisfied that the circumstances are such as to justify an extension of time for doing any act or taking any proceeding under these rules ......he may extend the time upon such notice to other parties and upon such terms as, subject to paragraph (5) below, he may direct." S.A.W. sort an order of certiorari to quash the decision of the Registrar refusing them an extension to submit evidence.

Decision

Jacob J held that it is clear from the language of the Rule that before an extension can be granted by the Registrar he must be satisfied that the circumstance are such as to justify the extension. The onus lies on he who seeks an extension. In this case the onus lay on the present applicants to put forward reasons such as to justify an extension. No reasons were put forward to explain the conduct of S.A.W. during at least most of the six months period. The Court held that the Registrar was reasonable in coming to the conclusion that he did. Indeed if he had come to any other conclusion he might well have been acting unreasonably because of the absence of any material which could have justified an extension. The application was therefore dismissed.