Re Seiko Epson Corporation
Read the full judgment text of HCMP 844/2000 on BabelCite. This High Court CFI judgment was delivered on 9 June 2000.
1. This is an appeal by the Applicant, Seiko Epson Corporation, against the decisions of the Registrar of Designs dated 21 January 2000 brought under section 58 of the Registered Designs Ordinance, Cap.522 ("the Ordinance"). The appeal concerns a question of construction of section 92 of the Ordinance and section 73 of the Registered Designs Rules ("the Rules"). The matter in contention is whether under the Ordinance and the Rules, the Registrar is empowered to extend time for the first renewal
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HCMP000844/2000 HCMP 844/2000 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE MISCELLANEOUS PROCEEDINGS NO. 844 OF 2000 ____________
____________ Coram: Deputy High Court Judge S. Kwan in Court Date of Hearing: 24 May 2000 Date of Handing Down of Judgment: 9 June 2000 _______________ J U D G M E N T _______________ 1. This is an appeal by the Applicant, Seiko Epson Corporation, against the decisions of the Registrar of Designs dated 21 January 2000 brought under section 58 of the Registered Designs Ordinance, Cap.522 ("the Ordinance"). The appeal concerns a question of construction of section 92 of the Ordinance and section 73 of the Registered Designs Rules ("the Rules"). The matter in contention is whether under the Ordinance and the Rules, the Registrar is empowered to extend time for the first renewal of United Kingdom design registrations deemed registered in Hong Kong under the transitional provisions in the Ordinance. The facts and background 2. The Applicant is one of the companies in the Seiko group of companies and is the registered proprietor of 6 United Kingdom design registrations applicable to timepiece, wristwatch and ink cartridge ("the Subject UK Design Registrations"), the respective dates of registration of which were 18 January 1990, 15 February 1990, 31 March 1995, 31 March 1995, 2 March 1995 and 10 May 1995. Under the law in force in Hong Kong before the commencement of the Ordinance on 27 June 1997, the Subject UK Design Registrations received automatic protection in Hong Kong by virtue simply of their registration in the United Kingdom pursuant to section 2 of the United Kingdom Designs (Protection) Ordinance, Cap. 44, which was enacted in 1928 and continued in force until it was repealed by the Ordinance. 3. This position was altered with the enactment of the Ordinance shortly before the change of sovereignty in July 1997. With the enactment of the Ordinance, Hong Kong has its own legislation governing registered designs and a Hong Kong Designs Registry was established. After the commencement of the Ordinance, in order to obtain design protection in Hong Kong, a design registration would have to be applied for and obtained from the Hong Kong Designs Registry. 4. However, as at the date of the commencement of the Ordinance, there were subsisting United Kingdom design registrations and pending applications under the Registered Designs Act 1949 in the United Kingdom which were or would have been (in the case of pending applications) automatically protected under the repealed Cap. 44. To continue protection for such subsisting registrations and pending applications, transitional provisions were made in Part IX of the Ordinance, sections 90 to 96. 5. The scheme under the transitional provisions is as follows. Under section 91(1) and (2), United Kingdom design registrations and, in the case of pending applications, the ultimate registrations, are deemed to be registered under the Ordinance for an initial period without the need of re-registration. The "initial period of registration" is defined in section 91(3) as consisting of the period
6. In respect of the Subject UK Design Registrations, the "initial period of registration" had expired on the following dates:
7. It is provided in section 92(1) that the "initial period of registration" may be extended or renewed, subject to the limitation that the total period of registration under the Ordinance and the Registered Designs Act 1949 may not exceed 25 years and 6 months in the aggregate. Section 92(2) provides that if the registered proprietor desires to renew after the "initial period of registration", he shall submit an application to the Registrar in accordance with section 92(3). 8. The time for making the application for the first renewal of registration, as provided in section 92(3), is as follows:
9. Section 92(3)(a)(ii) is not applicable to the Subject UK Design Registrations. It is not in dispute that by virtue of section 92(3)(a)(i), the Applicant's application to renew the period of registration after the "initial period of registration" was required to be made on or before the following dates:
10. The Applicant was late in submitting the application to renew. What happened was as follows. 11. On 2 July 1999, Miller Sturt Kenyon, a firm of chartered patent agents and European patent attorneys, received instructions from the Applicant to apply for renewal of the Subject UK Design Registrations. On the day before the receipt of instructions, the firm's formalities manager, who was in charge of procedural deadlines, had unexpectedly tendered resignation. This caused a great deal of disruption in the firm. Moreover, this employee had entered incorrect deadlines for filing applications to renew the Subject UK Design Registrations into the firm's computer system. The error was not detected in time and only came to light after the deadlines for submitting the application had expired. Thus, it was on 10 January 2000 that the Hong Kong associates of the firm, Messrs Fairbairn Catley Low and Kong, filed applications for renewal with the Hong Kong Designs Registry. On 17 January 2000, the solicitors filed applications for extension of time of 6 months for filing the applications for renewal. The Registrar replied by letters dated 21 January 2000. In his letters, the Registrar refused each of the applications for renewal as each of them was filed out of time. As for the applications for extension of time, he stated that "there is no provision for extension of time for application for renewal under section 92 of the Registered Designs Ordinance, Designs Form D5 [i.e. the form used by the Applicant's solicitors in submitting the application for extension of time] is not applicable in this case". It is this decision of the Registrar on 21 January 2000 that the Applicant is challenging in this appeal. 12. I should mention that Mr Martin Liao, who appeared for the Registrar in this appeal, made no submissions on instructions as to whether the Registrar should exercise his discretion in favour of the Applicant in granting an extension of time for submitting the application for renewal until 10 January 2000, in the event that I should rule that the Registrar does have the power to grant an extension of time. The only contention of the Registrar in this appeal is whether there is power to grant such an extension under the Ordinance and the Rules. First renewal and subsequent renewals 13. It is necessary to look at the statutory scheme for the renewal of United Kingdom design registrations deemed to be registered under the Ordinance in greater detail. I have already referred to the provision governing the time for application of the first renewal after the "initial period of registration", which is the situation we are concerned with in this appeal, and this is section 92(3)(a) of the Ordinance. Section 92(3)(b) provides for the documentation and information required to be submitted with the application for the first renewal. Section 92(3)(c) provides that the application must be accompanied by the prescribed renewal fee. Section 75(1) of the Rules provides that an application for first renewal under section 92(2) of the Ordinance shall be made on the specified form. 14. Further renewals of the period of registration are governed by section 92(4) and this provides that section 28(3), (4) and (5) applies to such further renewal. Section 28(3), (4) and (5) are the provisions applicable to the renewal of the period of registration of a design registered under the Ordinance. 15. There are a number of differences in the provisions governing the application for first renewal and subsequent renewals of United Kingdom design registrations. 16. Firstly, for subsequent renewals, the application must be made within a specified period, i.e. before the end of the current period of registration but not earlier than 3 months immediately preceding the end of the current period (section 28(3) of the Ordinance and section 29(1) of the Rules). In contrast, the application for first renewal must be made on or before a specified date (section 92(3)(a) of the Ordinance). I understand it is more usual to provide for an application for renewal to be made within a specified period in other jurisdictions with a similar system for the registration of industrial designs, such as the United Kingdom, Japan, New Zealand, Australia and Malaysia. 17. Secondly, in respect of subsequent renewals, there is statutory provision for a reminder of renewal of registration by the Registrar. This is under section 28 of the Rules which provides that the Registrar shall not earlier than 6 months nor later than 1 month before the end of the period of registration give written notice of the imminent expiration of the period to the registered owner and inform him that the period of registration may be renewed in the manner as described in section 29 of the Rules. Thus, there is protection given to the registered owner to minimise the possibility of allowing the registration to lapse by error or omission. There is no provision for a reminder in the case of first renewal. Of course this is practicably impossible because United Kingdom design registrations are deemed to be registered for an initial period without the need of re-registration and as they are not entered in the local Register, the Registrar would have no knowledge of them and no means of giving a reminder to the registered owner concerned. 18. Thirdly, for a subsequent renewal, there is a grace period of 6 months if the registered owner should fail to apply for renewal within time. Under section 28(5) of the Ordinance, it is provided that if during the period of 6 months immediately following the end of the current period of registration, the renewal fee and any prescribed additional fee are paid, the registration shall be treated as if it had never ceased to have effect. There is thus an entitlement to have the registration renewed during the grace period provided that the application is made within time and the requisite fees are paid, see also section 29(4) of the Rules. This is not subject to any discretion of the Registrar. In contrast, there is no provision for any grace period in the case of first renewal. 19. It could readily be appreciated that the statutory scheme for subsequent renewals is more benevolent and gives greater protection to registered owners. Provisions for extension of time 20. Under section 79 of the Ordinance, which confers a general power on the Registrar to make rules, it is provided as follows:
21. It is common ground that the Registrar is empowered by virtue of section 79(2)(f) and (4)(b) of the Ordinance to make rules for an extension of time in an application for first renewal. The question in this appeal is whether the Registrar had in fact made any such provision in the Rules. Mr Andrew Liao, SC, who appeared with Mr John Yan for the Applicant, contended that the Registrar had done so. Mr Martin Liao argued to the contrary. 22. The only provision in the Rules providing for extension of time is section 73 and this reads as follows:
23. It is important to refer to section 29 of the Rules to see what is excluded under the extension of time provision in section 73:
24. It is submitted on behalf of the Applicant that section 73 of the Rules confers on the Registrar the power to extend time for application of the first renewal under section 92(2) and (3) of the Ordinance and section 75 of the Rules, the latter provision reads as follows:
25. The Applicant argued that only section 29 of the Rules is excluded from the extension of time provision in section 73. Section 73 is general in its application and applies to the doing of "any act or taking any proceeding under these Rules, other than the periods referred to in section 29". Hence, this plainly applies to the doing of an act or taking proceeding under section 75 of the Rules. 26. The Registrar contended that this is not the proper construction of section 73. The argument is succinctly encapsulated in the skeleton submissions of Mr Martin Liao which reads as follows:
27. It would be appreciated that although section 79(2)(f) gives the Registrar the power to make rules "for the alteration of any period of time specified in this Ordinance or the rules", the power of extension in section 73 of the Rules only relates to "any period of time for doing any act or taking any proceeding under these Rules". It is crucial to the Registrar's argument that the making of an application for first renewal is provided for under the Ordinance only and that the power to extend time under section 73 can only be invoked if there is provision for a time limit under the Rules. Is this correct on a proper construction of the relevant provisions in the Ordinance and the Rules? 28. In my view, it is not. It is correct that section 75 of the Rules does not provide for a time limit and that the time limit for making the application for first renewal is found in section 92(3)(a) of the Ordinance. However, the relevant words in section 73 governing the power to extend time are: "any period of time for doing any act or taking any proceeding under these Rules". These words may be contrasted with the provisions for extending time in the Trade Marks Rules, Cap. 43 and the Patents (General) Rules, Cap. 514, which are as follows: Trade Marks Rules, section 91
Patents (General) Rules, section 100(1)
29. I agree with the submissions of Mr Andrew Liao that there is no apparent justification to give a restrictive interpretation to section 73 and construe the power to extend time as applicable only to the time limits prescribed by the Rules. I think there is a valid contrast between section 73 of the Rules and the provisions for extension of time under the Trade Marks Rules and the Patents (General) Rules, which are statutes in pari materia in this context. It is also worthy of note that the Patents Ordinance (other than section 125) and the rules made thereunder had commenced operation on the same date as the Ordinance and the Rules, i.e. 27 June 1997. 30. As for Mr Martin Liao's submission that the provision for the application for first renewal is found in section 92(3) of the Ordinance and not section 75 of the Rules which merely provided for the specified form to be used, I think the matter should be looked at in this way. Section 92(3)(b) provides for the documents and information that should be included with the application submitted and section 92(3)(c) provides that the application should be accompanied by the prescribed fee. These are further acts required to be done when the application for renewal is submitted. It is unnecessary to repeat these requirements under the Rules. Section 75(1) provides for the specified form on which the application for first renewal is to be made. The fact that other acts which are required to be done at the time when the application is submitted are not repeated in section 75 does not detract from the fact that section 75 does make provision for doing an act or taking a proceeding under the Rules. Moreover, it seems to me that on the wording of section 75(1) and (2), an application for first renewal could be regarded as "an application under section 92(2) of the Ordinance" (i.e. the expression used in section 75(1)) just as much as "an application being made under subsection (1)" (i.e. of section 75 of the Rules, being the expression used in section 75(2)). 31. For the above reasons, I am inclined to think that on a proper construction of the Ordinance and the Rules, the Registrar does have power under section 73 of the Rules to grant an extension of time for an application for first renewal. As Mr Martin Liao has raised other matters in support of his contention that the true legislative intent is not to provide for any extension of time in the case of first renewal, it is necessary for me to deal with the matters he put forward. 32. Mr Martin Liao laid emphasis on the different provisions made for first renewal and subsequent renewals in the statutory scheme. He submitted that there is good reason for the relatively "harsh" treatment for an application for first renewal and that this is due to the "unique" situation in Hong Kong before and after the transfer of sovereignty. Under the old system, there was automatic recognition for a United Kingdom design registration. With the change of sovereignty, and on the enactment of the Ordinance, transitional provisions had to be made for the continued protection of these United Kingdom design registrations which would be phased out under the new system if the registered owner should fail to bring himself within the local design registration system by applying for renewal pursuant to the Ordinance. The provision for deemed registration of a United Kingdom registration is entirely special. Hence, it is understandable why the first renewal of these registrations should be treated differently from the renewal of local registrations or the further renewals of such deemed registrations. 33. I am not persuaded by the historical factor to find that the true legislative intent must be to rule out any extension of time for the first renewal of deemed registrations. As was pointed out by counsel for the Applicant, the situation in Hong Kong when the Ordinance was enacted in 1997 was not unique. Malaysia had at one time given automatic recognition to United Kingdom design registrations and had subsequently established its own system of design registration. Under the Industrial Designs Act 1996 in Malaysia, the procedure for the renewal of pre-existing United Kingdom registrations is exactly the same as the procedure for extension of the period of registration for local registrations. I see no cogent reason for proceeding on the premise that the first renewal of deemed registrations should be subjected to much stricter requirements by reason of the historical factor. On the contrary, it seems to me that as the transitional provisions of the Ordinance were enacted to give continued protection to United Kingdom design registrations, it would require very clear language to exclude first renewal of deemed registrations from the power to extend time, otherwise the protection which registered owners used to enjoy under the repealed Cap. 44 might be seriously jeopardised. 34. Next, Mr Martin Liao submitted that if the Registrar is empowered to grant an extension of time for an application for first renewal, this would create an anomaly because he is not empowered to extend time for an application for renewal of a local registration or an application for subsequent renewal of deemed registrations, as section 29 of the Rules is expressly excluded in section 73. I do not agree that an anomalous situation would be created. I think there is a good reason for excluding section 29 of the Rules from the power to extend time because there is already ample protection for the registered owner in that situation by virtue of the reminder of renewal of registration under section 28 of the Rules and the grace period of 6 months under section 28(5) of the Ordinance. As I have pointed out above, there is no equivalent protection for a registered owner who has to apply for first renewal of a deemed registration. 35. I was referred by Mr Martin Liao to the rule of primary intention for delegated legislation in Bennion on Statutory Interpretation, 3rd ed., pages 189-190. He submitted that unlike an application for subsequent renewal, there is no provision in the Ordinance for any grace period for an application for first renewal. He argued that if the Registrar is empowered under the Rules to provide for an extension of time for first renewal, this would be tantamount to providing for a grace period via the back door and would offend the rule of primary intention for delegated legislation. I am unable to accept that submission. It seems to me that this overlooks a distinction between a grace period (under the relevant provisions of the Ordinance and the Rules, a registered owner is entitled as of right to have his registration renewed during the grace period if the requirements stipulated are fulfilled) and an extension of time which is subject to the discretion of the Registrar. I do not think the absence of a grace period for first renewal in the Ordinance should negate any power to extend time for first renewal in the Rules, as the two are not identical. 36. Lastly, I was referred by Mr Martin Liao to the decision of Litton, JA (as he then was) in Mito Kogyo Kabushiki Kaisha v. Mitac Inc., Miscellaneous Proceedings 2766 of 1992, 29 October 1992. Mr Martin Liao relied on this decision by way of illustration as it was held in that case that where an existing statute (i.e. section 79(1) of the Trade Marks Ordinance) prescribes a specific time limit for appeal, the Rules Committee exercising restricted powers of rule-making under section 55 of the High Court Ordinance cannot override such statutory time limit in Order 59 r.4(1)(c) and that the provision to extend time in Order 3 r.5(1) is plainly not applicable. It does not seem to me that that decision is of assistance because I am concerned with a different statutory scheme. The Paris Convention 37. Mr Andrew Liao had a fall-back argument. In case I should disagree with him that the plain interpretation of section 73 of the Rules does give power to extend time in this situation, and if I should have any doubt of two possible interpretations, he submitted that it would be right to refer to the Paris Convention for the Protection of Industrial Property ("the Paris Convention") and apply the tenet of interpretation for treaty statutes as set out in Vol. 44(1) Halsbury's Laws of England, 4th ed., para. 1426:
38. Of like effect are the dicta of Diplock LJ (as he then was) in Salomon v. Commissioners of Customs and Excise [1967] 2 QB 116 at 143E-144A:
39. I have decided in favour of the Applicant's interpretation in the earlier part of this judgment and I am of the view that the terms of the legislation are clear and unambiguous. In case I should be wrong about this, and if I should have concluded that the terms of the legislation are reasonably capable of more than one meaning, I think it would be relevant to look at the Paris Convention. Mr Martin Liao had submitted otherwise. He argued that the provision in the Paris Convention relied on by Mr Andrew Liao had no application here. 40. The Paris Convention was first signed in 1883 and had been revised on a number of occasions. The most recent amendment was on 28 September 1979. It applies to a range of intellectual property including industrial designs. The rights and obligations under the Convention have been extended to Hong Kong both before and after 1 July 1997. 41. Article 1 of the Convention provides that the countries to which the Convention applies constitute a Union for the protection of industrial property and that the protection of industrial property has as its object, inter alia, industrial designs. Article 2 provides for national treatment for nationals of countries of the Union and Article 4 provides for the right of priority of, inter alia, industrial designs. These articles are implemented in the Ordinance in sections 15 to 17. Article 5quinquies provides that industrial designs shall be protected in all countries of the Union. 42. The relevant provision relied on by Mr Andrew Liao is Article 5bis and the relevant part reads as follows:
43. Mr Andrew Liao argued that applying the tenet of statutory interpretation, there is a presumption that section 73 of the Rules should be interpreted in a manner that is consonant with the treaty obligation of Hong Kong under the Convention to allow for a grace period for an application for first renewal, which in effect is what an extension of time, if granted, would achieve. 44. Mr Martin Liao's answer was as follows. 45. Firstly, he pointed out that Article 5bis prescribes for a grace period "for the payment of the fees prescribed for the maintenance of industrial property rights", it is not concerned with a grace period for "submitting an application" of renewal of registration. I do not agree with this. One has to bear in mind that this is an international agreement and was drafted in broad terms. The payment of fees referred to in the Article was for the "maintenance of industrial property rights". In my view, this relates to the situation of an application for renewal of registration. 46. Next, Mr Martin Liao argued that Article 5bis does not make it mandatory to provide for a power to grant extension of time, what is required under that provision is a grace period. I appreciate there is a difference between the two but an extension of time, if granted, would achieve the same protection and effect as a grace period. 47. Mr Martin Liao argued that the obligation to fulfil Article 5bis was met in that there is a grace period provided for the renewal of local registrations and subsequent renewals of deemed registrations under section 28(5) of the Ordinance. This is no answer to the obligation to comply with Article 5bis in so far as the application for first renewal of deemed registrations is concerned. I have rejected the argument based on historical factor that the application for first renewal should deserve different treatment. 48. I also rule in favour of the Applicant on Mr Andrew Liao's fall-back argument. If there is any doubt as to the meaning of the legislation, section 73 should be interpreted in such a manner that is consonant with the obligation of Hong Kong to fulfil Article 5bis of the Paris Convention. 49. In my judgment, the Registrar is in error in refusing the Applicant's application for extension of time on the ground he gave, namely, that there is no statutory provision for extension of time for an application for first renewal. Mr Martin Liao had not sought to argue that the present case is not appropriate for the Registrar to exercise his discretion to extend time. Having considered the circumstances under which the Applicant was late in submitting the applications to renew, and as it is within my power under section 58(4) of the Ordinance to "exercise any power which could have been exercised by the Registrar in proceedings from which the appeal is brought", I would allow this appeal and order that the decisions of the Registrar on 21 January 2000 be set aside, that an extension of time for filing the subject applications be granted until 10 January 2000 and that the subject applications filed on 10 January 2000 be deemed to have been filed within time. There would be an order in terms of paragraphs (1) and (2) of the Notice of Originating Motion. 50. Costs of this appeal should follow the event and I make an order nisi that the Registrar do pay the Applicant's costs in this appeal with a certificate for 2 counsel.
Representation: Mr Andrew Liao, SC and Mr John M Y Yan, instructed by Messrs Eccles and Lee, for the Applicant Mr Martin Liao, instructed by the Department of Justice, for the Registrar of Designs
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