The Supreme Court allowed an appeal by the Controller of Patents, Designs and Trade Marks in a dispute over the deadline for appealing a refusal to register a three-dimensional soap-bar shape as a trade mark. It ruled that the statutory three-month appeal period runs from the Controller’s decision and cannot be extended by the court or the Controller in the absence of further statutory provision or rules made under the Act.
The Proctor and Gamble Company applied to register the shape on 2 October 1995. After the Trade Marks Act, 1996 came into force, it asked for its application to be considered under that Act. The Controller notified the company in November 1999 that the application was refused. The company requested written grounds and received them on 24 January 2000. It began appeal proceedings on 17 April 2000.
The preliminary issue before the Supreme Court was whether the proceedings were brought within the time allowed. The Controller argued that section 79 of the 1996 Act set an absolute three-month limit, starting on the date of the refusal decision. The company accepted there was no specific extension provision in the Act or its rules, but argued that existing court rules allowed extra time. It also argued that the three months should run from delivery of the written grounds, since those grounds would help an applicant decide whether and how to appeal.
Delivering the judgment on 4 June 2003, Mr Justice McCracken said the existing court rule allowing extra time could not override the statutory time limit. The court therefore had no power under that rule to extend the period set by section 79.
The judgment acknowledged a gap in the legislation: it set no time limit for the Controller to provide written grounds, creating the possibility that the appeal period could expire before grounds arrived. But the judge concluded that the Act’s reference to the Controller’s “decision” meant the original refusal, not the later written statement of reasons. An applicant could appeal within three months whether or not written grounds had been requested or received.
The Supreme Court also clarified that the High Court judge did not need to certify points of law for the appeal to proceed to the Supreme Court on the preliminary issue. The court’s ruling resolved that procedural question and the interpretation of the deadline. The judgment does not state that the Supreme Court determined the underlying merits of the trade mark application.