clr/1989/1989_3A_595.pdf

(1989)Thedeposit ol the documents on 21/S/S7 could not be considered as an application, because the\ were not accompanied b\ two. but onl\ by oncccrtiticdcopv Inthe tile of the Administration anote was inserted. on the letter ot theapplication dated21 August 19S7.b> anofficer from the Rcgistiai's ollice to the effect that the olficer accepted the document filed for the purpose ol submitting them to ihe Rcgistiar for his decision The rejection ot the application was signed by the "Registrar ol Trademarks"' However, the Rcgistiar ol Trademarks is the same person as the Olticial Rcccner andResist ιαι whowas theproper organ in accordance with the Iaw 10determine the application In the light ol the principles enunciated in the hereinabove Headnoies. the recourse was dismissed 5 10 15 Recourse dismissed. No order as to costs 20 Casesreletred to Chnstodouiou ν Republic IRSCC I. HadjiPapasymeou \ Republic (19S4) 3 C LR I1S2. 25 Pelcticoltds Republic (19S5)3 CLR I5S2. tCAihand Others \ Republic (19S9) 3CLR 63. An^or Corporation \ Republic

(1969)1CI R 12S, 30 \fead Corporation ν Republic (19S6)3 C LR 2204 Recourse. 35 Recourse against the refusal of the respondent to accept applicants' application tor the registration in Cyprus ot U.K. patent No. 2088379B. Chr.Theodoulou, for the Applicants. L. Koursoumba (Mrs),Counsel of the Republic B, for the 596 40 3 C.L.R. Bristol-Myers Comp.v.Reg.of Trade Marks Respondent. Cur.adv. vult. HADJITSANGARIS, J. read the following judgment. The applicant, by the present recourse, challenges the decision of the respondent, dated the 3rd September 19S7, whereby he refused to accept the application of the applicant for registration in Cyprus of U.K. patent No.20SS379B. The applicant isthegrantee of patent No.2088379B sealed in the United Kingdom on 22.8.19S

1. 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 andnotified the Registrar accordingly by letter dated 21st August 1987.The second certified copy was finally filed on the 26th August
2. After considering the matter, the Registrar decided to dismiss the application on the ground that it wasfiled after theexpiration of the3year period prescribed by the Law. and informed the applicant's lawyers accordingly by letter dated the 3rd September.
3. As a result the present recourse was filed. Counsel for applicant argued,byhiswritten address,that on the 21st August
4. the Registrar accepted the application and requested the applicant's lawyers to furnish him with the secondcertified copy later andfor this reason healso askedthe 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 modem technology appeared and that a photocopy machine could have been used in the present case the Registrar could have dispensed with the second certified 597 H'Tsangaris. J. Bristol-Myers Comp. v.Reg.of Trade Marks

(1989)copy. Counsel also contended, making reference to English cases, that whenthere isamistakeonthepartofthePatent office, then extension of time isgiven. He lastly argued that the subjudice 5 decision,whichwassignedbytheRegistrarofTrade Marks,was reached by an incompetent organ and it should therefore be annulled. Counsel for the respondent argued that the provisions of 10 section 5,regarding thetwocertified copiesaremandatory;that there isno provision for extending the 3years' period and that the Registrar had no discretion to accept registration since the provisions ofthelawwerenotcomplied with.Shefurther denied that the Registrar accepted the application on the 21st August 15 19S7.whichwasfiled with onecertified copy.Shefinally 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 signed for the Registrar of Trade marks whose duties are 20 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 was-signed on behalf of the Registrar of 25 Trade Marks.The recourse isalso filed against the Registrar of Trade Marks. . The proper organ to register patents is. tinder the law, (Cap.266) 'the Registrar'. "Registrar' according to section 2 of 30 the Law.means 'the Official ReceiverandRegistrarandincludes any other person appointed by the Council of Ministers 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 35 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, thefact that the letter containing the sub judice decision was signed. 40 obviously by oversight, 'for theRegistrar ofTrade Marks' isof minimaf importance,--since- it-is obvious from-its-title, that it 598 3 C.L.R. Bristol-Myers Comp.v.Reg.of Trade Marks H'Tsangaris, J. emanates from theoffice of the Official Receiver and Registrar. who isthe proper organ inaccordance with the law. Arecourse isdirected against the act or decision which isits 5 subject matter and not against the organ responsible for it, which isa party only in the sense that isgiven the opportunity to beheardinrespect thereof.(See Christodoulou v. Republic 1 R.S.C.C. 1 at p. 9; HadjiPapasvmeou v. The Republic

(1984)3 C.L.R. 11S2 at pp. 1184-1185; Peletico Ltd. v. 10 Republic (19S5) 3C.L.R. 1582at p. 1589: Fesas and Others v.the Republic

(1989)3C.L.R.

1. In thecase of Christodoulou v.Republic (supra)the Court proceeded, on its own motion, to amend, at the stage of giving 15 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.TheRepublic (supra). 20 Being alsoin lull agreement withthejudgments inthe above cases in this respect. Ihereby direct that the description of the respondent inthisrecourseshouldbeamended accordingly. I will now proceed to examine the merits of the case.The 25 Law applicable is the Patents Law. Cap. 266 and the relevant sections are4.5 and6.which read as follows: 30 35 40 "
2. Any person being the grantee ot a patent (which expression shall include a patent of addition) in the United Kingdom or any person derivinghisrightfrom 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. Whereanypartial assignment ortransmission hasbeen made,all proper parties shall bejoined in the application for registration.
3. An application for registration of a patent under this Lawshall be made to theRegistrar in the prescribed manner andshallbeaccompanied bytheprescribed tee.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 599 H'Tsangaris. J. Bristol-Myers Comp. v.Reg.of Trade Marks

(1989)Kingdom Patent Office givingfull particulars of thegrant of the patent on suchspecification or specifications. 6.Upon such application and beinglodged,together with the documents mentioned in section 5 of this Law, the 5 Registrar shall issue a certificate of registration in the prescribed form under hishand andseal". Asto the time limit of three years within which applications may be made it hasbeen decided bythis Court that section 4 is 10 not a procedural but a substantive enactment, that no applications will be accepted ifthey are filed outside the 3years 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. TheRepublic 15

(1986)3C.L.R.

1. A proper application must be accompanied by the documents mentioned in section
2. which include two certified copies of the specification. If the provisions of sections 4 and 5 20 are complied with, the Registrar shall issue a certificate of registration. Thewording ofthesectionscitedabove isclearanddoes not in my view leave any room for doubt or any discretion to the 25 Registrar either to accept registration out of time or extent the time for filling an application or to accept registration if all essentials contained insections4and5havenot been complied with. The fact, as mentioned by counsel for the applicants, that Cap.266 isan old Law.enacted before the modern technology. 30 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 itstands.Itisanaccepted fact thatthesecondcertified copywas 35 filed with the Registrar's Office on the 26th August 1987.that is after theexpiration of the 3years period. As to the argument of counsel for the applicant that the Registrar accepted registration on the 21st August and is 40 therefore estopped by his own conduct from dismissing the application of the applicant, I have not been persuaded on the 600 3C.L.R. Bristol-Myers Comp. v.Reg. of Trade Marks H'Tsangaris, J. material before me, that the Registrar did in fact accept such registration. In the file of the administration there isa note, on the letter of applicant's counsel dated 21st August 19S7,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 the21st August asuntenable. 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 shouldhavebeen accepted. Myanswertothisisthat 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 100of theEnglish Patent Rules,which makesspecific provision for the purpose.Sincenosimilarprovision existsinour law.theEnglish cases on this point are inapplicable in the present case. Itherefore find, on thebasisoftheabove,that thesubjudice decision wasreasonably open to the Registrar. In the result this recourse fails and ishereby dismissed with no order for costs. Recourse dismissed. No order its tocosts. 601