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National Court of Papua New Guinea |
PAPUA NEW GUINEA
[IN THE NATIONAL COURT OF JUSTICE]
OS (COMM) NO. 956 OF 2018 & OS (COMM) NO. 958 OF 2018 (CONSOLIDATED HEARINGS)
IN THE MATTER OF THE TRADE MARKS ACT (CH. 385) AND IN THE MATTER OF TWO APPLICATIONS PURSUANT TO SECTION 13 TRADE MARKS ACT
BETWEEN:
DIGICEL (SINGAPORE) PRIVATE LIMITED
First Plaintiff
(in both OS 956 of 2018 & OS 958 of 2018)
AND:
DIGICEL (PNG) LIMITED
Second Plaintiff
(in both OS 956 of 2018 & OS 958 of 2018)
V
AMELIA NA’ARU as the REGISTRAR OF TRADE MARKS
First Defendant
(in both OS 956 of 2018 & OS 958 of 2018)
AND:
DIGIVOIP COMMUNICATIONS LIMITED
Second Defendant
(in OS 956 of 2018)
AND:
DIGITEC PNG LIMITED
Second Defendant
(in OS 958 of 2018)
Waigani: Anis J
2021: 30th August, 6th September
2022: 28th September
TRADEMARKS – Objector aggrieved by the decision or actions of the Registrar of Trademarks – Seeking relief to rectify the decision of the Registrar – s 13, Trade Marks Act Chapter No. 385 – preliminary issues - whether proper mode adopted under the Trade Marks Act Chapter No. 385 – whether correct jurisdiction invoked – s 40(1), Trade Marks Act - whether Notices of Objection filed within the prescribed period – sections 13, 40 and 41 considered – considerations – whether contempt charges should be considered – consideration - ruling
Cases Cited:
Digicel Singapore and Or v. Amelia Na’aru and Ors (2020) N8441
In the Matter of the Trade Marks Act and In the Matter of Seeto Kui (Holdings) Pty Limited (2000) N1926
Counsel:
Mr. E. Asigau, for the Plaintiffs
Ms N Paka, for the First defendant
Mr. L. Manua, for the Second Defendants
JUDGMENT
28th September, 2022
1. ANIS J: This is my decision in regard to the above matters. Both proceedings are related and as such they were heard together by consent of the parties. The first and second plaintiffs (who may also be referred to herein as plaintiffs) are named as such in both proceedings. The same can be said for the first defendant (Registrar of Trademarks/ Registrar) in both proceedings. The only parties whose names appear only once in both proceedings are Digivoip Communications Limited (Digivoip) which is named as the second defendant in OS 956 of 2018, and Digitec PNG Limited (Digitec) which is named as the second defendant in OS 958 of 2018. For this purpose, I will refer to them as the second defendants.
2. Also heard together at the hearing by consent of the parties, was a contempt application which had been filed by the plaintiffs on 27 October 2020 (Contempt Application) under OS 958 of 2018. The plaintiffs claim that Digitec had breached the terms of an interim injunctive order that was made earlier on 6 August 2020 which restrains Digitec from operating under its trademark “Digitec” until further order of the Court. Digitec has formally entered a plea of “not guilty” to the charge.
EVIDENCE
3. Evidence were adduced and tendered by both parties. They were marked with exhibit numbers. The same applied in relation to the contempt charge.
BACKGROUND
4. I have set out the background of the matter in my earlier decision in these matters, that is, Digicel Singapore and Or v. Amelia Na’aru and Ors (2020) N8441. At [3], it reads:
The plaintiffs’ complaint is this. They take issue with the first defendant’s acceptance and registration of the second defendants’ trademarks, namely, “Digivoip” and “Digitec” (the 2 trademarks). They claim that the names are similar to those of their registered logos and trademark names, and for the first defendant to accept and register them, they argue, is in breach the provisions of the Trade Marks Act Chapter No. 385 (Trade Marks Act). But the plaintiffs were late to lodge their objections (notice of oppositions) within the timeframe required under the Trade Marks Act. Their argument is this. They claim that they had requested for and the first defendant had granted them extension of time within which to lodge their notice of oppositions. They say based on that, they submitted their notice of objections to the first defendant within the said extended period. They say the first defendant has however changed her position and has proceeded to and has purportedly registered the 2 trademarks to or under the names of the second defendants.
4. The plaintiffs, aggrieved by the actions or inactions of the first defendant, file these 2 proceedings.
MAIN CONTENTION
5. The main basis for the plaintiffs’ claim is confirmed in their written submission as well as in the heading. They file these proceedings pursuant to s13(1) of the Trade Marks Act Chapter No. 385 (TM Act/ the Act). The section, as a whole, reads:
13. Rectification of Register by Court.
(1) Subject to this Act, the Court may, on the application of the Registrar or a person aggrieved, order the rectification of the Register by—
(a) making an entry wrongly omitted to be made; or
(b) deleting or amending an entry wrongly made or wrongly remaining; or
(c) inserting a condition or limitation that ought to be inserted; or
(d) correcting an error or defect.
(2) On the application of the Registrar or of a person aggrieved, the Court may make such order as it thinks fit for the purpose of cancelling or varying a registration on the ground of failure to observe, or contravention of, a condition or limitation entered in the Register.
(3) The power to order rectification of the Register conferred by this section includes power to order the removal of a registration from Part A to Part B of the Register.
(4) The Registrar shall not make an application to the Court under this section unless he considers the application is desirable in the public interest.
(5) Notice of an application under this section (other than an application by the Registrar) shall be given to the Registrar, who may appear and be heard, and shall appear if so directed by the Court.
(6) An office copy of an order made under this section shall be served on the Registrar who shall, on receipt of the order, take such steps as are necessary to give effect to the order.
6. And they seek the following relief herein (as summarised or merged):
MEANING - SECTION 13(1)
7. I now turn to s 13(1). In my view, the section is express. It states the 4 different types of orders the National Court may, upon application by the Registrar or an aggrieved person, issue to rectify a registered trademark that is kept in the Register. The Court may (a), order an entry that was wrongly omitted to be included in the Register, or (b), delete or amend an entry that was wrongly entered in the Register, or (c), insert a condition or limit that ought to or should have been inserted, or (d) correct an error or defect that had been entered in the Register.
8. However, the Court’s power under s 13(1) is Subject to the Act as stated therein. As such, it is subject to s 13(2) which states that the Court may issue rectification orders on the ground of failure to observe, or contravention of, a condition or limitation entered in the Register. So, the 2 grounds where the Registrar or an aggrieved person could rely on or plead to ask the Court to exercise its power under s 13(1) are, (i), alleged failure to observe a condition or limitation that is entered in the Register regarding a trademark, or (ii), alleged contravention of a condition or limitation that is entered in the Register regarding a trademark.
9. The plaintiffs’ complaint again is that although they were granted an extension of time by the Registrar to lodge their 2 Notices of Opposition, the Registrar proceeded afterwards or regardless and registered the 2 trademarks “Digivoib” and Digitec. The Plaintiffs argue that the Registrar should have, after accepting the 2 Notices of Opposition, proceeded under PART VI. As such, they allege breaches of provisions including those under PART VI of the Act.
10. So, it is certain, that the plaintiffs are not challenging anomalies or breaches of a condition, in any one of the 2 registered trademarks of the second defendants that has been entered in the Register by the Registrar. Rather, they are challenging the actual registration process, its purported breaches, and the exercise of power or want of it, by the Registrar, in accepting and registering the 2 trademarks of the second defendants without regard to their 2 Notices of Opposition. That to me is where my difficulty lies, and I ask myself whether I have jurisdiction, or whether the plaintiffs can claim breach of provisions of the TM Act under s 13. Breach of the provisions of the TM Act, in my view and for the stated reasons above herein, cannot be a cause for an aggrieve person like the plaintiffs herein, to invoke s 13. The only 2 grounds that may be pleaded to invoke s 13 are those that are expressly stated under s 13(2) as summarized above, namely, (i), alleged failure to observe a condition or limitation that is entered in the Register regarding a trademark, or (ii), alleged contravention of a condition or limitation that is entered in the Register regarding a trademark.
11. I would also add that the Court’s power under s 13(1) are merely corrective or are administrative in nature; they involve issuance of orders by the Court to correct errors, make edits, or include omissions or conditions that may have been overlooked or were otherwise entered that obviously require attention or correction. It also may involve an application by an aggrieved party who is dissatisfied with the decision of the Registrar that is made under s 12. Section 13(1), however, is not intended for any substantive challenges to or concerning the actions of the Registrar on the registration process or for a person to invoke to allege breach of a provision of the TM Act.
12. So, after careful consideration, which is premised on my observations and interpretations of s 13(1) and (2) of the TM Act, my finding or view is this. The plaintiffs’ claim for allege breaches of the provisions under the TM Act, which is premised on s 13, is misconceived. Section 13 does not provide a right or basis for an aggrieved party to invoke to seek breach or breaches of the provisions under the TM Act in the manner as is sought or requested by the Plaintiffs. The plaintiffs are not invoking the Court’s jurisdiction to rectify or correct an error, typo, defect, misspelling, or vary or include a condition as required or qualified under s 13(2), nor are they regarded as aggrieved persons within the meaning of s 12 of the Act. Rather, they intend to challenge the decision or conduct of the Registrar in regard to the registration of the 2 trademarks of the 2 defendants, and also in regard to the actions or decisions of the Registrar in not attending to their Notices of Objection as required under s 40 in regard to the 2 trademarks of the second defendants, namely, “Digivoib” and “Digitec”. Such challenges cannot be premised on s 13 thus are misconceived as well as it also means that this Court does not have jurisdiction to determine the matter. Further, as s 13(1) is to be read Subject to the Act, apart from s 13(2), s 13 should also be read subject to s 40. Section 40 appears directly relevant to the plaintiffs’ cases or claims. Section 40 stipulates the process to follow for a party that opposes registration of a trademark. The process is provided for under PART VI of the Act.
13. For completeness, I will proceed to consider in particular the time limit for filing a notice of objection under s 40 under PART VI of the TM Act.
NOTICE OF OPPOSITION
14. Section 40 reads:
40. Notice of opposition.
(1) A person may, within three months after the date of advertisement of the acceptance of an application for the registration of a trade mark, or within such further period as the Registrar, on application made to him within the first-mentioned period, allows, give notice to the Registrar in the prescribed manner of opposition to the registration of the trade mark.
(2) The opponent shall serve a copy of the notice of opposition on the applicant on or before the date on which the notice is given to the Registrar.
(3) The applicant may, within three months after the date of service on him of the copy of notice of opposition, lodge with the Registrar in the prescribed manner a counter statement in support of his application.
(4) The applicant shall serve a copy of the counter statement on the opponent on or before the date on which the counter statement is lodged with the Registrar.
(5) The Registrar may require the opponent or the applicant to appear before him and give evidence or further explanation in respect of the opposition or the application.
(6) Subject to Section 41, the Registrar shall, after the expiration of a period of three months from the date on which the notice of opposition is given to him, or such further period, not exceeding three months, as the Registrar on the application of the opponent or the applicant allows, determine the opposition and decide—
(a) to register the trade mark without conditions or limitations; or
(b) to register the trade mark subject to such conditions or limitations as he thinks fit; or
(c) to refuse to register the trade mark.
(7) In determining the opposition the Registrar may take into account a ground of objection whether relied on by the opponent or not.
(8) A person who is aggrieved by a decision of the Registrar under Subsection (6), may appeal to the Court. [Underlining is mine]
15. In addressing the 2 Notices of Opposition of the plaintiffs, I set-out the undisputed relevant facts as follows. On 18 April 2017, the second defendants applied under PART V of the TM Act, to register 2 trademarks, namely, “DIGIVOIB” and “DIGITEC”. On 13 July 2017, upon request by the Registrar, the second defendants delivered an amended application form to the Registrar. On 10 October 2017, the Registrar advised the second defendants that she had accepted the registration of the 2 trademarks. On 24 December 2017, the Registrar published a notice of the second defendants’ application for registration of trademarks “Digivoip” and “Digitec” in her office’s Intellectual Property Office Journal 100. On 25 March 2018, the Registrar issued certificates of the 2 trademarks to the second defendants. At the date and time of issuance of the 2 certificates, the Registrar did not receive any notice of opposition either from the plaintiffs or from a third party in regard to the registration of their trademarks.
16. However, sometime later on 14 May 2018, the plaintiffs lodged their Notices of Opposition with the first defendant in regard to the registration of the 2 trademarks. Arguments were then raised as to whether an extension of time was granted by the Registrar and, if so, whether the extension sought was valid.
17. I make this observation. Section 40(1) of the TM Act is express. It states that if an extension of time is required by a person who intends to file a Notice of Opposition, it must be made or sough within the 3 months of the publication period, that is, as of or from the date of publication of acceptance of an application for trademark by a successful applicant. In the present case, the 3 months period within which the plaintiffs may lodge their Notices of Opposition under s 40(1), expired on 25 March 2018 (i.e., the 3 months commencing as of 24 December 2017 to 24 March 2018). The plaintiffs made their request for extension of time to the Registrar on 29 March 2018. The Registrar purportedly granted 1 month extension to the plaintiffs on 30 April 2018. I used the term purportedly because the Registrar, in this proceeding, amongst other reasons, does not recognize her action in granting an extension to be consistent with the requirement under s 40(1) of the Act, and evidence adduced herein shows that she had deviated from that position since and had recognized the registration process and grant, in relation to the 2 trademarks of the second defendants. The plaintiffs, however, maintain and argue that they had sought and obtained the extension, and had lodged their 2 notices with the Registrar’s office within the 1-month extended period.
18. In my view, the plaintiffs’ argument on extension of time is inconsequential and also misconceived. The reason is simple. The plaintiffs do not deny that they applied for extension of time (to be granted to lodge notices of opposition) outside the 3 months publication period as required under s 40(1). Undisputed fact shows that their request was made on 29 March 2018, which was 5 days after the expiry date of the publication period, which had commenced from 24 December 2017 to 24 March 2018. The plaintiffs were simply out of time to request for the said extension of time. And the Registrar does not have any power under s 40 to grant an extension of time outside the 3 months period. Section 40(1) is not subject or open to any discretion that may be exerted by the Registrar. The relevant case on point is, In the Matter of the Trade Marks Act and In the Matter of Seeto Kui (Holdings) Pty Limited (2000) N1926. Hinchliffe J, in addressing s 40, stated:
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.
19. I would adopt these as my own herein.
20. However, in responding to this issue, the plaintiffs also refer to s 94. They argue that the Registrar has such a power under this section to grant extension of time, and in this case, they submit that she had done so, that is, in regard to their late request under s 40(1). As such, they submit that their 2 Notices were valid and that they should have been dealt with or processed, under s 40 or 41 of the TM Act.
21. Section 94 states:
94. Extension of time.
Where, by this Act, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided, extend the time either before or after its expiration. [Underlining is mine]
22. I note the submissions of the parties on this.
23. I, however, and with respect, reject the plaintiffs’ submissions on their interpretation of s 94 and how it may apply to s 40(1). In my view, it is obvious, as stated therein under s 94 that the Registrar may exercise his or her discretion therein subject to or unless otherwise expressly provided. In this case, s 40(1) expressly provides the time period within which an applicant, who intends to seek extension of time to lodge a Notice of Objection, is required to or must lodge his or her request, which is, within 3 months from the date of publication of the acceptance of registration of the trademark concerned. If there was no set timing or period imposed under s. 40(1) then the Registrar may invoke his or her power under s 94. However, this is not the case.
24. As such, the 2 Notices of Opposition were purportedly lodged based on an invalid extension of time that was or may have been purportedly granted by the Registrar. The request for the said extension of time was made well after the 3 months publication period. The request itself was void including any purported acceptance or grant of extension that was or may have been given by the Registrar. I find that to be the case for the present matter.
SUMMARY
25. In summary, I find the 2 claims baseless as well as misconceived, that is, based on the preliminary findings of the Court.
CONTEMPT CHARGE – OS 958 OF 2018
26. I refer to the Contempt Application. I note that the basis for the contempt charge is premised on an interlocutory order. The interlocutory injunctive order was made on 6 August 2020. It reads:
......
27. Given the interlocutory nature of Court Order of 6 August 2020 which was made in the interim, and given the final decision of the Court in regard to the substantive matters (based on findings on the preliminary issues) which will see both matters dismissed, I find no utility in regard the Contempt Application. The dismissal of this proceeding means that the interim Court Order of 6 August 2020 is a nullity and shall be discharged forthwith. As such, the contempt charges can no longer stand or be regarded as premised on an existing valid court order.
28. I therefore dismiss the Contempt Application.
COST
29. An order for cost is discretionary. I will order cost to follow the event, that is, on a party/party basis to be taxed if not agreed.
ORDERS OF THE COURT
30. I make the following orders:
(1) The proceedings, including the injunctive order of 6 August 2020 in OS 958 of 2018, are dismissed forthwith.
(2) The plaintiffs shall pay the defendants’ costs of the proceedings, on a party/party basis which may taxed if not agreed.
(3) Time for entry of these orders is abridged to the date of settlement by the Registrar which shall take place forthwith.
The Court orders accordingly.
________________________________________________________________
Pacific Legal Group: Lawyers for the Plaintiffs
IPA In-house Legal Counsel: Lawyers for the First Defendant
Rageau Manua & Kikira: Lawyers for the Second Defendants
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