L'Oreal and Anor v Interconsumer Products Ltd (HCT-00-CC-CA 13 of 2006)
Observed later treatment
No later-treatment classification is recorded for this judgment.
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Holding
The Registrar of Trademarks erred in setting aside trademark opposition proceedings without first deciding the appellants' pending application for extension of time. By hearing only the respondent's application to set aside opposition without notifying or hearing the appellants, the Registrar violated the rules of natural justice. The Registrar must first entertain and decide applications for extension of time on their merits before proceeding to set aside opposition proceedings.
Outcome
Opposition proceedings reinstated; registrations cancelled pending fresh hearing by the Registrar
Facts
The respondent applied to the Registrar of Trademarks for registration of two trademarks, SMOOTH & LOVELY (no. 28097) and NICE and LOVELY (no. 28192), on or about 4 October 2005. The appellants commenced opposition proceedings after the applications were advertised. The respondent filed counter statements. The appellants then applied for extension of time to gather evidence and file statutory declarations. Without responding to the appellants' extension applications, the Registrar, on application by the respondent, set aside the opposition proceedings and granted registration of the trademarks. The respondent's application to set aside opposition had not been copied to the appellants' counsel. An earlier application for extension of time by the appellants dated 25 April 2006 was already on record when the Registrar made his decision on 18 September 2006.
Issues
- Whether the Registrar of Trademarks erred in setting aside opposition proceedings without first deciding the appellants' pending applications for extension of time.
- Whether the Registrar violated the rules of natural justice by hearing the respondent's application without notifying or hearing the appellants.
Orders
- Appeal allowed.
- Opposition proceedings reinstated.
- Registration of trademarks 'SMOOTH & LOVELY' (no. 28097) and 'NICE and LOVELY' (no. 28192) cancelled.
- Registrar directed to hear appellants' applications for extension of time for filing statutory declarations and thereafter proceed as the law directs.
- Costs of the appeal awarded to the appellants.
Rules and key headnotes
Legislation cited (2)
- Trademark Act s.20(7)
- Trademark Rules r.101
Full judgment
The original judgment as reported. Read the original PDF before relying on any passage.