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ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ
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(1989) 3A CLR 595
1989 May 23
[HADJITSANGARIS, J.]
IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION
BRISTOL - MYERS COMPANY,
Applicants,
v.
THE REGISTRAR OF TRADE MARKS,
Respondent.
(Case No. 919/87)
Patents - Registration of- The Patents Law, Cap. 266, sections 5 and 6, application not accompanied by two certified copies of the specification - Rightly rejected.
Patents - Registration - The Patents Law, Cap. 266 - Whether power to extend the 3 year period provided by section 4 - Question determined in the negative.
Estoppel - Application for registration of patent - Acceptance by an officer of the documents deposited with a note to forward them to the Registrar for a decision - Not sufficient to raise estoppel, in the sense that the application cannot later be rejected.
Recourse for annulment - Parties - Recourse directed against an administrative act and not against the organ which issued that act.
The applicant is the grantee of patent 2088379B of the U.K. issued on 22/8/84. On 21/8/87 the applicant applied that the patent be registered in Cyprus. The application was not accompanied by two, but only by one certified copy of the specification of the U.K. patent. The second copy was forwarded to the Registrar on 27/8/87. The Registrar rejected the application on the ground that it was filed after the expiration of the 3-year period provided for in section 4 of Cap. 266.
The deposit of the documents on 21/8/87 could not be considered as an application, because they were not accompanied by two, but only by one certified copy. In the file of the Administration a note was inserted, on the letter of the application dated 21 August 1987, by an officer from the Registrar's office to the effect that the officer accepted the document filed for the purpose of submitting them to the Registrar for his decision.
The rejection of the application was signed by the "Registrar of Trademarks". However, the Registrar of Trademarks is the same person as the Official Receiver and Registrar who was the proper organ in accordance with the Law to determine the application.
In the light of the principles enunciated in the hereinabove Headnotes, the recourse was dismissed.
Recourse dismissed. No order as to
costs.
Cases referred:
Christodoulou v. Republic 1 R.S.C.C. 1,
HadjiPapasymeou v. Republic (1984) 3 C.L.R. 1182,
Peletico Ltd. v. Republic (1985) 3 C.L.R. 1582,
Fesas and Others v. Republic (1989) 3 C.L.R. 63,
Ansor Corporation v. Republic (1969) 3 C.L.R. 325,
Mead Corporation v. Republic (1986) 3 C.L.R. 2204.
Recourse.
Recourse against the refusal of the respondent to accept applicants' application for the registration in Cyprus of U.K. patent No. 2088379B.
Chr. Theodoulou, for the Applicants.
L. Koursoumba (Mrs), Counsel of the Republic B, for the
Respondent.
Cur. adv. vuIt.
HADJITSANGARIS, J. read the following judgment. The applicant, by the present recourse, challenges the decision of the respondent, dated the 3rd September 1987, whereby he refused to accept the application of the applicant for registration in Cyprus of U.K. patent No. 2088379B.
The applicant is the grantee of patent No. 2088379B sealed in the United Kingdom on 22.8.1984.
On the 21st August 1987, the applicant applied, through its lawyers, for registration of the above patent in Cyprus. The application for registration was accompanied by one certified copy of the specification of the United Kingdom patent, instead of two, as required by the Law. Applicant's lawyers requested, by telephone, their client in England to send a second certified copy and notified the Registrar accordingly by letter dated 21st August 1987. The second certified copy was finally filed on the 26th August 1987. After considering the matter, the Registrar decided to dismiss the application on the ground that it was filed after the expiration of the 3 year period prescribed by the Law, and informed the applicant's lawyers accordingly by letter dated the 3rd September, 1987. As a result the present recourse was filed.
Counsel for applicant argued by his written address, that on the 21st August 1987, the Registrar accepted the application and requested the applicant's lawyers to furnish him with the second certified copy later and for this reason he also asked the said lawyers to ask their client for the second certified copy and furnish him (the Registrar) with a letter showing that the lawyers did in fact ask their client to send the second certified copy. As a result, it is counsel's contention, the Registrar is estopped from not accepting the application. Counsel further argued that one must look at the spirit of the law and not its strict letter; that bearing in mind that the law is an old law, enacted before the modern technology appeared and that a photocopy machine could have been used in the present case the Registrar could have dispensed with the second certified copy.
Counsel also contended, making reference to English cases that when there is a mistake on the part of the Patent office, then extension of time is given. He lastly argued that the sub judice decision, which was signed by the Registrar of Trade Marks, was reached by an incompetent organ and it should therefore be annulled.
Counsel for the respondent argued that the provisions of section 5, regarding the two certified copies are mandatory; that there is no provision for extending the 3 years' period and that the Registrar, had no discretion to accept registration since the provisions of the law were not complied with. She further denied that the Registrar accepted the application on the 21st August, 1987, which was filed with one certified copy. She finally argued that the sub judice decision was reached by the competent organ, who is the Official Receiver and Registrar according to the Law. The fact that it appears, by mistake of the typist, that it was sighed for the Registrar of Trade marks whose duties are in any event performed by the Official Receiver and Registrar, cannot affect the present proceedings.
I will deal with the last issue first. The letter containing the sub judice decision signed on behalf of the Registrar of Trade Marks. The recourse is also filed against the Registrar of Trade Marks.
The proper organ to register patents is, under the law, (Cap.266) 'the Registrar'. 'Registrar' according to section 2 of the Law, means 'the Official Receiver and Registrar and includes any other person appointed by the Council of Minister to exercise all or any of the powers and perform all or any of the duties of the Registrar'. There is no Registrar for Patents. Similarly, under the Trade Marks Law, Cap. 268. the proper organ is the 'Registrar' who is defined to be the 'Official Receiver and Registrar' to whom the functions of both offices (Patents and Trade Marks) are entrusted and there is no separate Registrar for Patent matters. So, therefore, the fact that the letter containing the sub judice decision was signed, obviously by oversight, 'for the Registrar of Trade Marks' is of minimal importance, since it is obvious from its title, that it emanates from the office of the Official Receiver and Registrar, who is the proper organ in accordance with the law.
A recourse is directed against the act or decision which is its subject matter and not against the organ responsible for it, which is a party only in the sense that is given the opportunity to be heard in respect thereof. (See Christodoulou v. Republic 1 R.S.C.C. 1 at p. 9; HadjiPapasymeou v. The Republic (1984) 3 C.L.R. 1182 at pp. 1184-1185; Peletico Ltd. v. Republic (1985) 3 C.L.R. 1582 at p. 1589; Fesas and Others v. the Republic (1989) 3 C.LR. 63.
In the case of Christodoulou v. Republic (supra) the Court proceeded, on its own motion, to amend, at the stage of giving judgment, the description of the respondent, so as to bring it into conformity with the true facts of the case. The case of Christodoulou was following in the cases of Peletico Ltd (supra) and Fesas and Others v. The Republic (supra).
Being also in full agreement with the judgments in the above cases in this respect, I hereby direct that the description of the respondent in this recourse should be amended accordingly.
I will now proceed to examine the merits of the case. The Law applicable is the Patents Law. Cap. 266 and the relevant sections are 4, 5 and 6, which read as follows:-
"4. Any person being the grantee of a patent (which expression shall include a patent of addition) in the United Kingdom or any person deriving his right from such grantee by assignment transmission or other operation of law may apply within three years from the date of the sealing of the patent to have such patent registered in Colony. Where any partial assignment or transmission has been made, all proper parties shall be joined in the application for registration.
5. An application for registration of a patent under this Law shall be made to the Registrar in the prescribed manner and shall be accompanied by the prescribed fee, two certified copies of the specification or specifications (including drawings, if any) of the United Kingdom patent and a certificate of the Comptroller General of the United
Kingdom Patent Office giving full particulars of the grant of the patent on such specification or specifications.
6. Upon such application and being lodged, together with the documents mentioned in section 5 of this Law, the Registrar shall issue a certificate of registration in the prescribed form under his hand and seal".
As to the time limit of' three years within which applications may be made it has been decided by this Court that section 4 is not a procedural but a substantive enactment, that no applications will be accepted if they are filed outside the 3 years period and that the Registrar has no discretion to extend such period (see the cases of Ansor corporation v. The Republic (1969) 3 C.L.R. 325 and Mead Corporation v. The Republic (1986) 3 C.L.R. 2204.
A proper application must be accompanied by the documents mentioned in section 5, which include two certified copies of the specification. If the provisions of sections 4 and 5 are complied with, the Registrar shall issue a certificate of registration.
The wording of the sections cited above is clear and does not in my view leave any room for doubt or any discretion to the Registrar either to accept registration out of time or extent the time for filling an application or to accept registration if all essentials contained in sections 4 and 5 have not been complied with. The fact, as mentioned by counsel for the applicants, that Cap. 266 is an old Law, enacted before the modem technology, with photo-copying machines appeared, is immaterial for the purposes of these proceedings. It affords perhaps an opportunity to make recommendations for the amendment of the law in this respect but the Court can only apply the Law as it stands. It is an accepted fact that the second certified copy was filed with the Registrar's Office on the 26th August 1987, that is after the expiration of the 3 years period.
As to the argument of counsel for the applicant that the Registrar accepted registration on the 21st August and is therefore estopped by his own conduct from dismissing the application of the applicant, I have not been persuaded on the material before me, that the Registrar did in fact accept such registration. In the file of the administration there is a note, on the letter of applicant's counsel dated 21st August 1987, by an officer from the Registrar's Office, to the effect that the officer accepted the documents filed with the explanation put forward by the applicant's representative for the purpose of submitting them to the Registrar for his decision. I find the contention of counsel that the Registrar had already accepted registration on the 21st August as untenable.
What remains to be considered is the argument of Counsel for applicant that there has been an error on the part of the Registrar and as a result, according to the English case law, registration should have been accepted. My answer to this is that firstly I cannot find, on the material before me, that there has been any error on the part of the Registrar and secondly, the English cases cited by learned counsel are based on rule 100 of the English Patent Rules, which makes specific provision for the purpose. Since no similar provision exists in our law, the English cases on this point are inapplicable in the present case.
I therefore find, on the basis of the above, that the sub judice decision was reasonably open to the Registrar.
In the result this recourse fails and is hereby dismissed with no order for costs.
Recourse dismissed. No order as
to costs.