R v Registrar of Trade Marks [1936] HCA 27; (1936) 55 CLR 271 (10 June 1936)

HIGH COURT OF AUSTRALIA

The King against The Registrar of Trade Marks;

Ex parte J. S. Staedtler.

H C of A

10 June 1936

Starke, Dixon, Evatt and McTiernan JJ.

Dean, for the prosecutor.

Tait, for the Registrar of Trade Marks.

T. W. Smith, for the Royal Sovereign Pencil Co. Ltd. (on whom notice of the order nisi was directed to be served).

Dean, in reply.

The following judgments were delivered:—

Starke J.

I have more difficulty about this matter than my learned brethren in view of the arguments that have been put to us, but I am not prepared to dissent from their view that sec. 38 provides a complete and exhaustive statement of the conditions and the times within which extensions of time for lodging opposition may be granted.

The decision will be that there will be a rule absolute for mandamus, that the Registrar proceed in the application for the trade mark as one in which no opposition has been lodged within the time limited by sec. 38, or any time to which the same might lawfully be extended, and there will be no order as to costs.

Dixon J.

I agree. By sec. 105, a general power is given to the Registrar to extend the times limited by the Act. It is a power which enables the Registrar to extend such a time either before or after its expiration. It contains no limit upon the period to which he may extend it. It contains no limit upon the time within which an application for extension may be made. Sec. 38 limits the period for lodging opposition to three months. It then proceeds to deal with the extension of that time. It imposes two conditions: first, that the time shall not be extended beyond three months and next, that the application for an extension shall be made within the original time. The words "on application made within the first period of three months" appear to me to be an express provision confining to the time limited for lodging the opposition the power of the Registrar to entertain an application for an extension of the time for opposition. This, in my opinion, is inconsistent with the full application of the general power given to the Registrar by sec. 105 to extend times after their expiration. It is true that the section does not say that the Registrar must allow an extension of time for opposition within the period limited for lodging the opposition. But sec. 38 does expressly require the making of the application to him for such extension within that period. This is necessarily restrictive of a power to extend a period after its expiration, which otherwise would be exercisable whenever invoked. It is, therefore, inconsistent with the full operation of the power derived by the Registrar from sec. 105. Sec. 47 shows the reason for this. It is that, on the expiration of time for opposition, when no opposition is lodged, the Registrar's duty to register becomes absolute. It appears to me that sec. 38 exhaustively states the conditions governing an extension of time for lodging opposition.

I agree that a mandamus should go in the form stated by Starke J.

Evatt J.

I agree. The main command of sec. 38 is that any person may, within three months, lodge at the office a notice of opposition. Then the Legislature proceeds to permit of an extension of the period of three months. The provision added to secure such purpose is that the notice of opposition may be lodged within "such further time not exceeding three months as the Registrar on application made within the first period of three months allows." This added provision includes interrelated matters and should be regarded as a unit and not analyzed into separate and independent powers. It authorizes the Registrar to allow further time, provided that such time does not exceed three months, and it also requires that the application for such extension shall be made "within the first period of three months." The provision thus creates a rule for extension of time which is quite distinct from the general power to extend conferred by sec. 105. It allows of extension in a different manner and by other means than those contemplated by sec. 105. In short, sec. 38 provides "otherwise" and does so "expressly" within the meaning of sec. 105.

The mandamus should go.

McTiernan J.

I agree. Sec. 38 in my opinion exhaustively and specially states the conditions upon which a person may apply for an extension of time within which to lodge a notice of opposition. Because of the express provision thereby made limiting the period in which such application may be made, sec. 105 gives no authority to extend the time after that period has expired.

Rule absolute for mandamus. No order as to costs.

Solicitors for the prosecutor, Shaw & Turner.

Solicitor for the Registrar of Trade Marks, W. H. Sharwood, Crown Solicitor for the Commonwealth.

Solicitors for the Royal Sovereign Pencil Co. Ltd., Bullen & Burt.