THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Reportable
Case No:  20625/2014

In the matter between:

ADCOCK INGRAM INTELLECTUAL

First Appellant
PROPERTY (PTY) LTD

ADCOCK INGRAM HEALTHCARE (PTY) LTD

Second Appellant

and

ACTOR HOLDINGS (PTY) LTD

Respondent

Neutral citation: Adcock Ingram Intellectual Property (Pty) Ltd v Actor Holdings

(Pty) Ltd (20625/14) [2016] ZASCA 41 (24 March 2016)

Coram:
Maya AP, Tshiqi, Wallis, Saldulker and Mbha JJA

Heard:
25 February 2016

Delivered: 24 March 2016

Summary: Trade Marks Act 194 of 1993 – s 21 read with s 45(3) thereof empowers
the Registrar of Trade Marks to condone the late filing of opposition to
an application for the registration of a trade mark and extend the three
month period prescribed for the filing of opposition.

__________________________________________________________________
ORDER
__________________________________________________________________

On appeal from: North Gauteng Division of the High Court, Pretoria (LI Vorster
AJ sitting as a court of first instance):

1 The appeal is upheld with costs including the costs of two counsel.
2 The matter is remitted to the North Gauteng Division of the High Court, Pretoria
for determination of the condonation application and the merits of the opposition.
__________________________________________________________________
JUDGMENT
__________________________________________________________________

Maya AP (Tshiqi, Wallis, Saldulker and Mbha JJA concurring):

[1] The crisp issue in this is appeal is whether the Registrar of Trade Marks (the
Registrar) has the power to condone the late filing of opposition to an application for
the registration of a trade mark and extend the opposition period, where such an
extension is requested after the expiry of the three month opposition period prescribed
in s 21 of the Trade Marks Act 194 of 1993 (the Act). The appellants appeal, with
leave of this court, against the decision of the North Gauteng Division of the High
Court, Pretoria (LI Vorster AJ). The court a quo dismissed their opposition to the
respondent’s application for the registration of trade mark number 2010/11953
LENTOGESIC, in class 5, in its name.

[2] The appellants are companies within the Adcock Ingram Group of Companies, a
leading South African healthcare group that develops, manufactures, markets and
distributes a wide range of h8ealthcare products in South Africa and the export market.
The first appellant, Adcock Ingram Intellectual Property (Pty) Ltd, is an intellectual
property holding company which owns most of the intellectual property used in the
Adcock Ingram Group of Companies. It was also the registered proprietor in South
Africa of trade mark registration no 1968/00213 LENTOGESIC in class 5 in respect of
analgesic preparations since 1968. The second appellant, Adcock Ingram Healthcare
(Pty) Ltd, is a manufacturer and distributor of pharmaceutical products. It uses the
trade mark LENTOGESIC under licence from the first appellant. The respondent,
Actor Holdings (Pty) Ltd is a South African holding company of a pharmaceutical
company, Actor Pharma (Pty) Limited.
Background
[3] On 23 February 2009 the first appellant’s LENTOGESIC trade mark
registration was removed from the trade mark register by reason of non-renewal.
According to the first appellant the non-renewal of its trade mark registration, which it
always intended to renew, was not due to its mistake but was caused by an
administrative error. That is hardly surprising because it had used the mark on various
products for over 40 years and there was no apparent reason for it to abandon it. The
appellants became aware of the lapse when they were served with a written notice
from the respondent’s attorneys, on 8 January 2013. The notice advised that the
respondent had applied for the LENTOGESIC trade mark with the intention to
‘commercially exploit [it] in earnest in early 2013’. The respondent also demanded that

the appellants cease all use of the trade mark and forthwith remove all LENTOGESIC
products from the market and trade.

[4] As it turned out, the respondent had lodged its trademark registration application
on 4 June 2010. The application was accepted by the Registrar on 10 July 2012 and
thereafter advertised for opposition purposes in the Patent Journal dated 29 August
2012.1 In response to the respondent’s notice, the appellants claimed the trade mark as
theirs. They pointed out that they were unaware of its lapse and would apply to have it
reinstated. (An application to restore the trade mark registration was indeed filed
around the time of the institution of these proceedings.) They demanded the withdrawal
of the respondent’s application failing which they would challenge the respondent’s
use of the trade mark in passing-off proceedings as they believed that it was likely to
deceive or confuse consumers.

[5] The appellants filed their opposition application in the Tribunal of the Registrar
of Trade Marks on 11 January 2013. They sought an order refusing the respondent’s
trademark registration and ancillary relief. They contended, inter alia, that the
respondent’s application was mala fide, because it was lodged in the full knowledge of
the appellants’ proprietorship of an identical, prior and well-established trade mark, in
relation to the same goods for which the respondent sought registration, in breach of ss
10(3) and 10(4) of the Act.2 The appellants also sought the Registrar’s condonation of

1 In terms of s 16(1) and (2) of the Act governing the procedure for applications for registration which ‘shall be made to the
registrar in the prescribed manner’ whereafter ‘[s]ubject to the provisions of th[e] Act, the registrar shall … accept … the
application.’ Section 17 of the Act requires that ‘[w]hen an application for registration of a trade mark has been accepted,
the applicant shall, as soon as may be after acceptance, cause the application as accepted to be advertised in the prescribed
manner.’
2 These provisions respectively prohibit the registration of trade marks ‘in relation to which the applicant for registration has

no bona fide claim to proprietorship’ and ‘a mark in relation to which the applicant for registration has no bona fide
intention of using it as a trade mark, either himself or through any person permitted or to be permitted by him to use the
mark as contemplated by section 38’.

their late opposition which ought to have been filed within three months of the
application’s publication in the Patent Journal ie by 29 November 2012.

[6] The respondent opposed the appellants’ proceedings. It contended that it
brought its trade mark registration application more than 15 months after the removal
of the appellant’s trade mark registration from the trade marks office register. It also
accused the appellants of wilful neglect of their trade mark registration and gross
neglect and ineptitude in dealing with the trade mark by failing to inspect the Patent
Journal and the trade mark register and ignoring renewal reminders and renewal
notifications issued by the Registrar which, the respondent argued, led to the lapse of
their trade mark.

[7] The Registrar did not adjudicate the opposition application. Instead, she
transferred it for hearing to the court a quo in terms of s 59(2) of the Act which allows
that procedure.3 A day before the hearing of the application, the respondent raised a
point in limine that it was not legally competent for the Registrar to condone the late
filing of the opposition where an extension of the opposition period was not requested
before the expiry of the stipulated three month period because the Act does not permit
it. The court a quo upheld the point in limine and accordingly dismissed the appellants’
condonation application on this basis without considering the merits of the dispute.

3 Section 59(2) reads, for relevant purposes: ‘Where proceedings in terms of section 21 … are pending before the Registrar,
the Registrar may in his discretion refer the proceedings to the court, and shall refer the proceedings to the court on written
application of all the parties to such proceedings.’

[8] The court a quo reasoned that s 45(3) of the Act, read with regulations 52(1)
and (3) of the Trade Marks Regulations (the regulations),4 did not ‘provide authority
for the proposition that a late objection can be condoned lawfully by the Registrar of
Trade Marks’. According to the court, s 29(1) of the Act read with regulation 52(1)
made it clear that an ‘objector to the registration of a trade mark has to request the
Registrar not to register the trade mark when requested to do so before the expiry of
the term within which opposition can be lodged’ otherwise ‘the Registrar has no option
but to refrain from issuing a certificate of registration’ for a further period. In the
court’s view s 45(3) read with regulation 52(1) authorised the extension of the period
for opposing registration but only if the request was made before its expiry. And s
29(1)(a) limits this power otherwise ‘the Registrar could never register a trade mark
when Section 29(1)(a) has been complied with, as, in terms of Section 45(3) read with
Regulation 52(3) that trade mark could, at any time after registration of the trade mark
be overturned and opposed [which is] clearly an absurd result and cannot have been
the intention of the legislature.’ The court concluded that the time limit within which
the appellants could lawfully oppose the trade mark registration had expired and could
not be extended.
Further evidence on appeal

4 The Trade Mark Regulations, GN R578, GG 16373, 21 April 1995. Regulation 52 deals with requests and applications
for extension of time and condonation and provides as follows:
‘(1) Any person interested in opposing a trade mark application may request the Registrar, on written notice before the
expiry of the term in which the enter opposition to the application in terms of section 21, not to issue the certificate of
registration for a period of three months from the date of expiry of the aforementioned term, and the Registrar shall not do
so.
(2) In the absence of an agreement between the parties the Registrar may, upon application on notice in terms of regulation
19(4) and on good cause shown, make an order extending or abridging any time prescribed by these regulations or by an
order of the Registrar or fixed by an order extending or abridging any time doing any act or taking any step in connection
with any proceedings of any nature whatsoever upon such terms as to him seems meet.
(3) Any such extension may be ordered although the application is not made until after the expiry of the time prescribed or
fixed, and the Registrar, when ordering any such extension, may make such order as to the recalling, varying or cancelling of
the results flow from the terms of any order or from these regulations.’

[9] On appeal before us, the appellants sought to lead further evidence. It was
submitted on their behalf that the failure to present it in the court a quo was not as a
result of lack of reasonable diligence on their part. They did not adduce it because they
could not have foreseen the objection in limine, which was not raised in the
respondent’s papers and was brought up very late, well out of the time of the filing of
heads (which the respondents did not even file) as prescribed by the practice directives
of the court a quo. It was argued that the evidence was admissible and material to the
issue on appeal.5 Furthermore, the interests of justice demanded its admission because
the decision of the court a quo affected not only the parties but the public at large,
including the manner in which the office of the Registrar of Trade Marks functions.

[10] The evidence sought to be placed before us was an affidavit deposed to by Ms
Fleurette Coetzee, the Trade Marks Senior Manager in the Companies and Intellectual
Property Commission, who fulfils the functions of the Registrar. It was meant to prove
the manner in which the Registrar has, since 1991, interpreted and applied the
provisions of the Act (and its predecessor, the Trade Marks Act 62 of 1963) and the
regulations promulgated thereunder, particularly in relation to the registrar’s powers to
condone non-compliance with time frames prescribed by the Act and the manner in
which the Registrar dealt with applications for extension of the opposition term. We
were urged to admit the affidavit on the strength of authorities which have held that
where an interpretation to be placed on a statute is not clear from its wording, the
manner in which it has been applied by the administering authority can give guidance

5 Botha v Regional Magistrate Cox NO & another [2009] ZASCA 42; [2009] (3) All SA 373 (SCA) para 13; De
Aguiar v Real People Housing (Pty) Ltd [2010] ZASCA 67; 2011 (1) SA 16 (SCA) para 12.

to its meaning.6 However, we dismissed the application (with costs) as we considered
the evidence sought to be introduced irrelevant in the view we take of the matter.
The issue on appeal
[11] Turning to the issue on appeal, the Act provides for opposition to an application
for the registration of a trade mark in s 21. In terms of these provisions, ‘[a]ny
interested person may, within three months from the date of the advertisement of an
application in terms of section 17 or within such further time as the registrar may
allow, oppose the application in the manner prescribed.’ Section 45(3) of the Act,
upon which the appellants relied for their condonation application, provides that
‘[w]henever by this Act any time is specified within which any act is to be performed
or thing is to be done by any person, the registrar may, on application by that person
and unless otherwise expressly provided extend the time either before or after its
expiration’.

[12] It was argued on the respondent’s behalf that these provisions did not permit the
condonation sought by the appellants. Section 45(3) was juxtaposed with ss 20(1) and
(2) of the Act7 which also fix time frames within which an applicant for the registration
of a trade mark must respond to the Registrar’s notice of a non-completed application
and, in addition to such time frames, also permit ‘such further time as the registrar may

6 See for example, Dinkel v Union Government 1929 AD 150 at 165; University of Pretoria, Adams & Adams and South
African Institute of Intellectual Property Law v Registrar of Patents 2002 BIP 68 (T) at 75F.
7 These provisions read:
‘20
Non-completed applications
(1)
If, by reason of default on the part of the applicant, after acceptance of the application, the registration of a trade
mark has not been completed within six months from the date of such acceptance, the Registrar shall give notice of the non-
completion to be applicant, and, if at the expiration of two months from that notice or of such further time as the Registrar
may allow, the registration is not completed, the application shall be deemed to have been abandoned.
(2)
If the application is refused or is conditionally accepted and the applicant, having been advised of the Registrar’s
objection to the application, or of his conditions for acceptance, fails to take such steps as are available to him under this Act
within three months of the date of such advice, or such further time as the Registrar may allow, the application shall be
deemed to have been abandoned.’

allow’ before the application is deemed to have been abandoned. It was contended
that these provisions stipulate default time frames or such times as may be allowed by
the Registrar. They do not envisage an extension of the default time frames, as a time
period that has expired cannot be extended, and s 45(3) conferred no discretion on the
Registrar to do so.

[13] Thus, so continued the respondent’s argument, a late attempt to oppose cannot
prevent the registration of a trade mark, which the Registrar will have accepted under s
16(2) of the Act even before the advertisement of the accepted application under s 17
thereof. And to achieve finality and certainty, the Act rather makes provision for
various ways in which a registered trade mark may be expunged from the register – (a)
under s 53;8 (b) by rectification of entries in the register by the Registrar or a court in
terms of s 24;9 and (c) by removal from the register by a court or the Registrar on
ground of non-use under s 27.  Accordingly it was submitted that there were other
remedies available to the appellants once the mark had been registered in the name of
the respondent. Moreover, s 29(1) of the Act, which makes no reference at all to the
Registrar’s power to extend the opposition period but merely deals with the
consequences where there is no opposition, clearly limited the Registrar’s power set
out in ss 21 and 45(3). Reference was also made to the European Union’s Directive on
the Harmonisation of Trade Marks laws. This has been applied by the United
Kingdom, upon whose legislation South African trade marks law was based. To that

8 Which provides for ‘recourse to court, and appeals’ and reads in relevant part as follows:
‘(1) Without derogating from the provisions of subsection (2), any person aggrieved by any decision or order of the
Registrar may, within a period of three months after the date of any such decision or order, apply to the Transvaal Provincial
Division of the Supreme Court [renamed the Gauteng Division of the High Court] for relief, and the said court shall have the
power to consider the merits of any such matter, to receive further evidence, and to make any order as it may deem fit.’
9 Section 24(1) provides that: ‘In the event of non-insertion in or omission from the register of any entry or of an entry
wrongly made in or wrongly remaining on the register, or of any error or defect in any entry if the register, any interested
person may apply to the court or, at the option of the applicant and subject to the provisions of s 59, in the prescribed
manner, to the Registrar, for the desired relief, and thereupon the court or the Registrar, as the case may be, may make such

end we were referred to similar statutory provisions in various foreign jurisdictions
which do not allow extensions of the period of opposition on a request made after the
expiry of the statutory period, except in ‘a limited and well-defined sense’. To allow
what the appellants sought would serve to protract the registration process indefinitely,
arbitrarily and cause uncertainty contrary to the legislature’s intention.

[14] In my view, the respondent’s contentions not only ignore the express wording of
the relevant provisions but render the provisions of s 45(3) of the Act superfluous.
There is no ambiguity either in s 21 or s 45(3). They mean precisely what they say.
The ordinary wording of s 21 places no limitation on the Registrar’s power to extend
the opposition period. Section 45(3), in the plainest of terms, governs ‘any time’
specified in the Act ‘within which an act is to be performed’ and empowers the
Registrar to extend that time, here the three-month period prescribed for the lodging of
opposition to an application for the registration of a trade mark, either before or after
its expiration, unless otherwise expressly provided. Neither the argument nor the
judgment of the court a quo paid any attention to the requirement that the power in s
45(3) could only be limited if it was ‘otherwise expressly provided’. It cannot be
restricted or limited unless there is an express provision saying it will not apply in a
particular situation. A limitation by implication is not what s 45(3) contemplates.

[15] Section 29(1), which forms part of a suite of provisions dealing with registration
and its effects, has no limiting effect on the Registrar’s power to extend the opposition
as found by the court a quo. It reads:
‘(1) When an application for registration of a trade mark has been accepted and advertised in the
prescribed manner and either–
(a)  the application has not been opposed and the time for notice of opposition has expired; or

order for making, removing or varying the entry as it or he may deem fit.’

(b)  the application has been opposed and has been granted,
the registrar shall register the trade mark as on the date of the lodging of the application for
registration, and that date shall, subject to the provisions of section 63, for the purposes of this Act
be deemed to be the date of registration: Provided that where it appears to the registrar, having
regard to matters which came to his notice after acceptance of an application, that the trade mark has
been accepted in error, he may withdraw the acceptance and proceed as if the application had not
been accepted.’

[16] To my mind, what these provisions seek to do is merely to mark the date of
registration, where there has been no successful opposition thereto, as the date when
the application was lodged unless the application was erroneously accepted, in which
case the acceptance will simply be withdrawn. Clearly, the words ‘the time for notice
of opposition’ in s 29(1)(a) necessarily include an extension of that time. The ‘absurd
result’ adverted to by the court a quo on this interpretation has no basis. Once the
Registrar has issued the registration certificate in respect of a trade mark application,
she becomes functus officio and cannot withdraw it even where it was issued in error.
An affected party would, in those circumstances, have to approach and satisfy the
Registrar or the court that it was proper to rectify the register accordingly in terms of
s 24 of the Act.10

[17] The Court a quo committed a cardinal error, which led to its misinterpretation of
the Registrar’s powers, by impermissibly using regulations (which it incidentally also
misconstrued), in particular regulation 52, as an aid to interpret the provisions of the
Act.11 I find nothing arbitrary, unlawful or unreasonable about the above reading

10  Colgate Palmolive Co v Smith Kline Beecham PLC & another 2004 BIP 122 (T); The Open Africa Initiative v Izinyawo
Productions (Pty) Ltd t/a Richard Loring Enterprises 2004 BIP 13 (RTM); Home Hyper City (Pty) Ltd v Homemark (Pty)
Ltd 2003 BIP 67 (RTM) at 70A.
11 Moodley & others v Minister of Education and Culture, House of Delegates & another 1989 (3) SA 221 (A) at 233E-F;
Minister of Health & another  NO v New Clicks South Africa (Pty) Ltd & others (Treatment Action Campaign & another
as Amici Curiae) [2005] ZACC 14; 2006 (2) SA 311 (CC) para 446; National Lotteries Board v Bruss NO & others

[2008] ZASCA 167; 2009 (4) SA 362 (SCA); Rossouw & another v Firstrand Bank Ltd [2010] ZASCA 130; 2010 (6)
SA 439 (SCA) para 24.

of ss 45(3) and 29(1)of the Act. This is particularly so bearing in mind that the Act
vests the Registrar with ‘all such powers and jurisdiction as are possessed by a single
judge in a civil action’ in connection with any proceedings before her.12 She is
obviously enjoined to exercise her discretion lawfully in considering an extension
application. And some foreign jurisdictions such as the Australia and New Zealand do
allow the extension of the opposition period albeit in limited circumstances as
acknowledged by the respondent itself. The appellants’ condonation application should
not have been dismissed and the appeal must succeed.

[18] Accordingly, the following order is made:
‘1 The appeal is upheld with costs including the costs of two counsel.
2 The matter is remitted to the North Gauteng Division of the High Court, Pretoria
for determination of the condonation application and the merits of the opposition.

____________________

MML Maya

Acting President

12 In terms of s 45(1) of the Act.

APPEARANCES
Appellant:
R Michau SC (with I Joubert)

Instructed by:

Spoor & Fisher Attorneys, Pretoria

Phatshoane Henney Inc., Bloemfontein

Respondent:
A Subel SC (with O Salmon SC)

Instructed by:

Fluxmans Attorneys, Pretoria

Lovius Block Attorneys, Bloemfontein

THE SUPREME COURT OF APPEAL OF SOUTH AFRICA

MEDIA SUMMARY OF JUDGMENT DELIVERED IN THE SUPREME COURT OF
APPEAL

FROM

The Registrar, Supreme Court of Appeal

DATE

24 March 2016

STATUS

Immediate

Please note that the media summary is for the benefit of the media and does not form part of the judgment.

Adcock Ingram Intellectual Property (Pty) Ltd v Actor Holdings (Pty) Ltd
(20625/14) [2016] ZASCA xx (24 March 2016)

The Supreme Court of Appeal today upheld an appeal brought against the North Gauteng
Division of the High Court, Pretoria. The respondent was ordered to pay the costs of the
appeal including the costs of two counsel and the matter was remitted to the high court for
the determination of (a) the appellants’ application for condonation of their late opposition to
the respondent’s application for the registration of a trade mark number 2010/11953
LENTOGESIC, in class 5, in its name, and (b) the merits of such opposition.

The SCA held that s 21 read with s 45(3) of the Trade Marks Act 194 of 1993 empowers the
Registrar of Trade Marks to condone the late filing of opposition to an application for the
registration of a trade mark and extend the three month period prescribed for the filing of
opposition.

--- ends ---