High Court of Ireland Decisions

1. In this action the Plaintiff appeals against a decision of the Defendant pursuant to the provisions of the Trade Marks Act 1996 Section 79 thereof. The matter comes before me by way of a preliminary issue as to whether or not the appeal is within time.

2. The facts are not in dispute.

3. The Plaintiff is a company incorporated in the United States of America and on the 2nd October 1995 pursuant to the Trade Marks Act 1963 the Plaintiff made application to register a three dimensional mark consisting of the shape of a bar of soap in Part A of the Register in Class 3. The application was subsequently converted to an application under the Trade Marks Act 1996. Following protracted proceedings in the Office of the Controller

4. The Plaintiff duly requested the written grounds of the Controller’s decision within the one month period limited and the written grounds of the decision were handed down on the 24th January 2000. The Plaintiff issued the summary summons herein on the 17th April 2000.

5. The Trade marks Act 1996 Section 79 thereof provides as follows:-

6. The Special Summons herein was issued outside the period of three months from the letter dated 25th November 1999 but within the period of three months computed from the handing down of the written grounds of the decision. It is in these circumstances that the issue arises as to whether the appeal is within time.

7. The following was the position with regard to appeals under the Trade Marks Act 1963. Section 57 of the Act provided as follows:-

8. The appeal herein corresponds with an appeal under Section 25 of the Trade Marks Act 1963. Section 25 of that Act contains the provisions relevant to this issue in subsections (4) to (8) thereof and these provide as follows:-

9. For completeness sake the Rules of the Superior Courts in force at the date of passing of the Trade Marks Act 1963 were the Rules of the Superior Courts S.I. No. 72 of 1962. These appeals are dealt with in Order 84 Rules 45 to 49 inclusive. The relevant rules for the purpose of this application are Rules 46 and 47 which provide as follows:-

10. Under the 1963 Act accordingly the position was as follows. The Controller notified his decision and the applicant could within one month thereafter require the Controller to state in writing the grounds of his decision. The applicant had two months from the date of dispatch to him of the statement of the grounds of the decision to appeal to the Court. The Controller had power to extend the period of two months upon application made to him within the period of two months by a period of up to three months. Neither the Controller not the applicant could rely, on grounds other than these upon which they relied in the stated, in their grounds, and appeal respectively

11. The Rules of the Superior Courts S.I. 15 of 1986 repeated Rules 46 and 47 set out above.

12. There is nothing relevant to this application in the Rules made under the 1963 Act - the Trade Mark Rules 1963 S.I. 268 of 1963.

13. It is against the foregoing legislative background that the Trade Marks Act of 1996 was passed. The Act in Section 81 empowers the Minister to make rules prescribing time limits for anything required to be done in connection with any proceedings under the Act and providing for the extension of any such time limit whether or not it has expired. Pursuant to this power the Minister made the Trade Mark Rules 1996 S.I. 199 of 1996. Rule 63 gives the Registrar general power to enlarge time and is in the following terms:-

14. The Rules excepted under Sub-Rule (2) of Rule 63 are not relevant to this application.

15. The only other provision of the Rules relevant to this application is Rule 27 which provides as follows:-

16. Thus while an Applicant must apply for a statement of grounds within one month from the date of notification of the decision and must appeal to the Court within three months from the date of a decision as no time limit is imposed for the handing down of the statement of grounds if the time limited for appeal commences to run at the date of the decision the grounds of the decision may not be available by the expiration of the time for appeal. The Applicant intending to appeal is then faced with the difficulty posed by the Rules of the Superior Courts Order 94 Rule 46: he is required to state the grounds of appeal and no grounds other than those so stated shall be allowed to be taken except with the leave of the Court. If this is what the Legislature intended it would generally be regarded as undesirable.

17. I have looked at the procedures applicable in the United Kingdom to see if any guidance can be gained there as to the correct construction of section 79. In the United Kingdom the Trade Mark Rules 1994 provide that an appeal must be taken within one month of the Registrar’s decision being sent (Rule 56(1)). However where a request is made for a statement of grounds the date on which that statement is sent is deemed to be the date of the Registrar’s decision for the purposes of any appeal against it. (Rule 56(2)). As the eventuality is dealt with expressly by the United Kingdom Rules decisions there are of little assistance to me.

18. It is a requirement of natural justice that reasons be given for a decision. Reasons will enable a person who has a right of appeal to determine whether he has good grounds for an appeal and will inform him of the case he will have to meet if he does decide to appeal: Natural Justice Principles and Practical Application Flick 2nd edition p. 118. Having regard to the provisions of the Superior Court Rules Order 94 Rule 46 which restrict an Appellant to the grounds of appeal stated unless leave of the Court is obtained and to the provisions of the Act in Section 80 which provides that in any proceedings before the Court the Controller shall not be awarded or be ordered to pay costs, the decision to appeal and the preparation of an appeal would ordinarily require consideration of the Controller’s grounds for his decision. I do not think that this inconvenience of having to decide on an appeal and to formulate the same in advance of receipt of the statement of grounds could have been intended by the Legislature. Such inconvenience may be avoided on the proper construction of Section 79. It is not open to the Court to import into the section a requirement that the Controller hand down his statement of grounds within the three month period allowing sufficient time to the applicant to consider and formulate an appeal. Equally it is not open to construe “decision” as the notification of the decision where no statement of grounds is sought or the date of handing down of the statement of grounds where a statement is sought. It is the Rules made under the Act and not the Act which provides for a statement of grounds and to adopt either of these constructions would be to allow the Rules made under the Act to regulate the construction of the Act. Neither of these courses accordingly are open.

19. The proviso in Section 79(1) of the Act “unless otherwise provided by rules of Court” may provide a solution. Thus the Rules of the Superior Courts could provide the time limit for an appeal the period to commence from the date of handing down of the statement of grounds. The Rules which predate the enactment of the Act do not make any such provision and recourse must be had to the rules as they exist. Order 84 Rule 47 provides that the summons must be issued within one calendar month from the date of the order or decision of the Controller appealed against or within such further time as the Controller may have allowed. The Controller has not allowed any further period. Order 122 Rule 7 confers on the Court the power to enlarge the time appointed by the rules for taking any proceedings even though the application for enlargement is not made until after the expiration of the time allowed. The Rules of the Superior Courts in being at the enactment of the Act contained a similar provision in Order 108 Rule 7. The effect of this it seems to me is that the true intention of the Legislature was that the Court under the rules of Court for the time being in force could regulate the time for appeals and where the time is so regulated could exercise its discretion to enlarge time where it thought appropriate. In these circumstances where a decision is made and an application made for a statement of grounds should an applicant wish to appeal he must do so within the period of three months from the date of the decision of the Controller or within such enlarged time as may be allowed to him by the Controller under the Trade Mark Rules 1996 Rule 63 or such enlarged time as may be allowed to him by the Court on an application under Order 122 Rule 7 of the Superior Court Rules. The appropriate course for me to adopt therefore is to adjourn the matter before me to enable the Plaintiff to bring an application for an enlargement of time.

20. Were it necessary to do so it would be open to determine the issue on a different basis. The second paragraph of the notification of the Controller’s decision dated 23rd November 1999 is in a form which I assume has its origin in the practice of the Controller’s office but which does not relate to the terms of the Trade Marks Act 1996. The notification provides that should there not be a request for written grounds within one month of its date “the application will be abandoned and removed from the pending list” . This it seems to me prevents the decision thereby notified from being a final decision as it treats the application as not abandoned and as still pending after the one month period where a statement of grounds is applied for. If compelled to do so I would be prepared to hold that this has the effect of postponing a final and appealable decision where a statement of grounds is applied for until such date as the statement of grounds should be handed down.