R v Registrar of Trade Marks

This case concerned an application for the registration of a trade mark by J. S. Staedtler. The Registrar of Trade Marks granted an extension of time for the Royal Pencil Co. Ltd. to lodge an opposition to this registration, purporting to act under section 105 of the *Trade Marks Act 1905-1922*. J. S. Staedtler sought a rule nisi for mandamus from the High Court to compel the Registrar to register the trade mark, arguing that the extension was improperly granted.

The central legal issue before the High Court was whether the Registrar had the power under section 105 of the *Trade Marks Act 1905-1922* to extend the time for lodging a notice of opposition to a trade mark registration, when the application for such an extension was made after the expiry of the initial period prescribed by section 38 of the Act. Section 105 grants the Registrar a general power to extend time limits specified in the Act, "unless otherwise expressly provided," while section 38 sets a three-month period for lodging opposition and outlines specific conditions for extensions.

The High Court, in a unanimous decision, held that the Registrar did not have the power to grant the extension in this instance. The Court reasoned that section 38 of the Act, by specifying that an application for an extension must be made "within the first period of three months," expressly provided otherwise within the meaning of section 105. This specific provision in section 38 was considered to exhaustively govern the conditions and times for extending the period of opposition, thereby overriding the general power granted by section 105. The Court found that the requirement for the application for extension to be made within the initial three-month period was inconsistent with the Registrar's general power under section 105 to extend time limits even after their expiration.

Consequently, the High Court made the rule absolute for mandamus, ordering the Registrar to proceed with the trade mark application as if no opposition had been lodged within the time limited by section 38 or any lawfully extended period. There was no order as to costs.