THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable

CASE NO: 82/2015
In the matter between:
TRUSTCO GROUP INTERNATIONAL (PTY) LTD

APPELLANT

and

VODACOM (PTY) LTD

FIRST RESPONDENT
THE REGISTRAR OF PATENTS

SECOND RESPONDENT

Neutral Citation:
Trustco Group International (Pty) Ltd v Vodacom (Pty) Ltd
(82/2015) [2016] ZASCA 56 (1 April 2016).
Coram:
Navsa ADP, Wallis, Petse JJA and Tsoka, Kathree-Setiloane AJA
Heard:

18 March 2016
Delivered:

1 April 2016
Summary:

Power of Registrar of Patents to extend time periods within which
any act or thing is required to be done in terms of the Patents Act 57 of 1978 –
provisions of s 16(2) of the Act not limited by Regulation 83, which sets the times for
filing a counterclaim in relation to an application for restoration of a patent.

______________________________________________________________________
ORDER
______________________________________________________________________

On appeal from: Gauteng Division of the High Court, Pretoria (Makgoba J sitting as
court of appeal).

1. The appeal is upheld with costs including the costs of two counsel.
2. The decision of the court below is set aside and substituted as follows:
‘The appeal against the second respondent’s decision to grant the appellant an
extension of time for the filing of its counter-claim is dismissed with costs.’

______________________________________________________________________
JUDGMENT
______________________________________________________________________
Navsa ADP (Wallis, Petse JJA and Tsoka, Kathree-Setiloane AJJA concurring):

[1] This appeal concerns the discretionary power of the Registrar of Patents to grant
extensions of time in relation to time periods within which any act or thing is required to
be done in terms of the Patents Act 57 of 1978 (the Act). The discretionary power to
grant an extension of time is set out in s 16 of the Act,1 the provisions of which I shall
discuss in due course. First, the background culminating in the present appeal.

1 Section 16 of the Act in whole provides the following:
‘16  Exercise of discretionary power by registrar and commissioner
(1) Whenever any discretionary power is conferred by this Act upon the registrar or the commissioner, he
shall not exercise that power adversely to an applicant or an objector or other person who according to
the register appears to be an interested party, without (if so required by the applicant or objector or other
interested party within a time fixed by the registrar or the commissioner, as the case may be) giving that
applicant or objector or interested party an opportunity of being heard.
(2) Whenever by this Act any time is specified within which any act or thing is to be done, the registrar or
the commissioner, as the case may be, may save where it is otherwise expressly provided, extend the
time either before or after its expiry.’

[2] The appellant, Trustco Group International (Pty) Ltd (Trustco), the holder of
South African Patent no 2010/03199, failed to timeously pay prescribed patent renewal
fees. The failure to pay the fees resulted in the lapsing of the patent on 26 November
2011. Trustco applied for the restoration of the patent in terms of s 47(1) of the Act,
which reads as follows:
‘Where a patent has lapsed owing to non-payment of any prescribed renewal fee within the
prescribed period or the extended period referred to in section 46(2), the patentee may in the
prescribed manner and on payment of the prescribed fee, apply to the registrar for the
restoration of the patent.’

[3] The restoration application was advertised in the Patent Journal on 26 June
2013, as required by s 47(2) of the Act read with regulations 49 and 50 of the Patent
Regulations (the Regulations).2 Section 47(2) reads as follows:
‘If the registrar is satisfied that the omission was unintentional and that no undue delay has
occurred in the making of the application, he shall advertise the application in the prescribed
manner, and thereupon any person (hereinafter in this section referred to as the objector) may
within such period as may be prescribed, give notice in the prescribed manner of opposition to
the restoration of the patent.’

[4] The restoration application was opposed by the first respondent, Vodacom (Pty)
Ltd (Vodacom). It filed its notice of opposition on 26 August 2013. Regulation 83
promulgated in terms of the Act, which was central to Vodacom’s submissions before
us, provides as follows:
‘Within two months of the filing of service of the notice of opposition the applicant shall file and
serve a counterstatement in the form of a plea. If such counterstatement is not lodged within the
said period or within such further period as the registrar may allow the application shall be
deemed to be abandoned and the opponent may apply to the commissioner for an order as to
costs.’ (my emphasis.)

2 Patent Regulations, GN R2470, GG 6247, 15 December 1978 (as amended), promulgated in terms of
s 91 of the Act.

[5] Thus, the appellant’s counterstatement would ordinarily have been due on 26
October 2013. As this was a Saturday, the counterstatement was due for filing on or
before 28 October 2013. 3

[6] On 30 October 2013 the appellant’s former attorneys requested a two-month
extension of time from the registrar within which to file the counterstatement. The
registrar granted the extension. The first respondent appealed against this grant of time
to the Commissioner of Patents (Makgoba J).

[7] The request for an extension of time was made within two days of the expiry of
the two-month period referred to in regulation 83 and no prejudice was alleged by
Vodacom. It is now necessary to have regard to the provisions s 16(2) of the Act where
the registrar’s discretionary power is located, it reads as follows:
‘Whenever by this Act any time is specified within which any act or thing is to be done, the
registrar or the commissioner, as the case may be, may save where it is otherwise expressly
provided, extend the time either before or after its expiry.’
The section is clear. The registrar has the power to extend any time provided in the Act
or the regulations and may do so either before or after its expiry. It is only if it is
‘otherwise expressly provided’ that this power is restricted.

[8] Vodacom’s case before Makgoba J was relatively straightforward. It contended
that the provisions of regulation 83, set out above, were peremptory and that failure to
comply with the time limits set thereby resulted in the deeming provision being
triggered. When that happened the application for restoration could rightly be
considered to have been abandoned. It submitted that the deemed abandonment
precluded the registrar from exercising the power of extending the time limit in
regulation 83.

3 Section 88(2) of the Act, relating to the computation of time periods under the Act provides:
‘Whenever the last day on which, in terms of this Act, any act may or is required to be done or any
document may or is required to be lodged, falls on a day on which the patent office is closed, that act may
be done or that document may be lodged on the next following day on which the patent office is open for
the transaction of business.’

[9] Makgoba J construed s 16(2) of the Act as follows:
‘This section authorises the registrar to extend the time either before or after the expiry of the
specified time, save where it is otherwise expressly provided in the Act and/or the regulations.
The provisions of section 16(2) are therefore in the nature of a general provision. This
would mean that the registrar is not given an unfettered discretion to extend the time periods. If
there is a specific provision to the contrary in the Act and/or regulations, he is not entitled to
grant an extension.’4

[10] The court below went on to say the following:
‘This is where the deeming provisions of regulation 83 come into the picture. The regulations
promulgated under the Patents Act are to be read conjunctively and not disjunctively with the
Patents Act. Reading section 16(2) of the Act conjunctively with regulation 83 would then mean
that the registrar cannot just grant an extension of time in terms of section 16(2) without having
regard to the peremptory and deeming provisions of regulation 83.
Consequently, the discretion conferred upon the registrar to extend a time period in
terms of section 16(2) cannot override a specific declaration of abandonment as set out clearly
in regulation 83. Counsel for the appellant submitted that if that were not so, an application like
that of the respondent in casu could be extended indefinitely with no certainty as to the end
thereof. I agree.’5

[11] The Commissioner rejected Trustco’s reliance on Lunt v Minister of Health for the
Union of South Africa NO (Lunt 1) 1959 BP 1 at 3F-4A, in which, as a result of the
striking out of a counterstatement , the applicant asked for a further time within which to
file a counter-claim. The applicant in that case had made the request after the two
month period provided for in regulation 83 had already expired. Makgoba J considered
that case to be distinguishable on the basis that the counterstatement  there was initially
filed within the prescribed time period even though it was struck out later.

[12] Makgoba J referred with approval to the decisions in Kaltenbach Thuring Société
Anonyme v Grande Paroisse Société 2001 BIP 62 at 65A; Weekly Property Trader v L
S Erasmus & another 2002 BIP 303 at 306C; Gateway Communications (Pty) Ltd v

4 Paragraph 11.
5 Paragraphs 12 and 13.

Gateway Data Communications & another 2005 BIP 186 (TPD) para 14-15; and
University of Pretoria v Registrar of Patents & others 2011 BIP 41 (CP) para 59 and 61.
In those cases it was held that it was not competent to grant an extension of time after
the two month period.6 The Commissioner considered himself bound by these decisions
and consequently upheld Vodacom’s appeal with costs and declared the application by
Trustco for the restoration of the patent to have been abandoned.7 It is against those
orders that the present appeal, with the leave of the court below, is directed.

[13] In my view, the court below erred in its reasoning and conclusions referred to
above. First, regulation 83 as could be expected, does not, in express terms or
otherwise, limit or in any way impinge on the registrar’s express remedial power as
provided for in s 16(2) of the Act. Simply put, it does not otherwise expressly make
provision in relation to the exercise, or for that matter, the prevention of the exercise of a
remedial discretionary power. It provides for the registrar to extend the time limit for the
filing of a counterstatement  and is silent on when that power may be exercised. Far
from expressly providing otherwise it leads directly to s 16(2). Thus, the regulation does
not fall within the proviso in s 16(2). It is doubtful that it could.

[14] In Rossouw & another v Firstrand Bank Ltd [2010] ZASCA 130; 2010 (6) SA 439
(SCA) para 24, this court said the following:
‘. . . [I]t is generally impermissible to use regulations created by a minister as an aid to interpret
the intention of the legislature in an Act of Parliament, notwithstanding that the Act may include
the regulations, . . .’ (Footnote omitted.)

[15] Furthermore, as correctly pointed out on behalf of Trustco, a remedial power,
such as the power to extend time periods aimed at avoiding harsh results should be
extended as far as the wording of a statutory provision will admit. In this regard, see
Slims (Pty) Ltd & another v Morris NO 1988 (1) SA 715 (A) at 734D-F and the authority
cited therein.

6 Paragraph 22.
7 Ibid.

[16] In addition as submitted further, the rule of statutory interpretation, that a specific
provision overrides a general provision, applies to provisions within the same legislative
instrument. A specific provision in a regulation cannot override a general provision in a
statute. To read the Act ‘conjunctively’ with the Regulations and to construe the
Regulations in the manner resorted to by the court below is in effect to have the tail wag
the dog.

[17] I now turn to deal with the cases referred to by the court below. In Lunt v Minister
of Health for the Union of South Africa No (Lunt 2) 1959 BP 18 the court was rightly
concerned about the ‘drastic result’ of the deeming provision of the applicable rule. This
caused it to hold that the language of Patent Rule 31(2), which was similar to the
wording of regulation 83, was not to be extended to a case where an applicant had in
fact timeously lodged a counterstatement which, subsequently, by operation of the rules
of pleading, was found to be defective. The court in Lunt 2 had regard to prior
authorities from which ‘it seems that where no counterstatement  is lodged within the
prescribed period, or an extension thereof by the registrar under order 31(7) [of Patent
Rules, 1953], no relief from the consequences of his failure can in any circumstances be
granted to an applicant’.8 However, it did not engage with the issue before it in the
manner discussed earlier in this judgment. In Gateway the court was dealing with a
repealed provision of the Trademarks Act 194 of 1993 that contained a deeming
provision and was not confronted with what is presently being considered.

[18] In University of Pretoria, the court was dealing with the refusal of an application
for the rectification of the register of patents. That case dealt with lapsing in terms of
ss 40 and 42 of the Act. It was not dealing with a situation such as the present nor did it
have regard to what is set out earlier in this judgment. The concern expressed by the
court below, that, to reason otherwise, is unwarranted and would enable a defaulting
patent holder to extend the application for restoration indefinitely is without merit. The
discretion has to be exercised judiciously and with due regard to the rights of both the
applicant and the objector.

8 At 22A.

[19] It was submitted on behalf of Vodacom that a finding that the registrar’s
discretionary power, as provided for in s 16(2) of the Act, was not limited by the
provisions of regulation 83 would lead to uncertainty and hardships for those who
‘infringed’ a patent during a period that might extend indefinitely. It was contended that
this was especially so if regard is had to the provisions of ss 45, 46, 47 and 48 of the
Act. These provisions deal with the effect of the grant of a patent, its duration, the
restoration of a lapsed patent and the rights of patentees after a patent is restored.
Sections 47 and 48, which relate to the restoration of a patent due to non-payment of
prescribed fees, have within them safeguards such as obliging an advertisement of the
application and protecting the rights of interested parties during intervening periods.
Thus, the fear of applications extending indefinitely is more imagined than real.
Moreover, s 66 of the Act restricts recovery of damages for infringement of a patent. It
provides that a patentee shall not be entitled to recover damages from a defendant who
proves that at the date of the infringement he was unaware and had no reasonable
means of making himself aware of the existence of the patent.

[20] The court below, for the reasons set out earlier, erred in its reasoning and in its
conclusion.

[21] The following order is made:
1. The appeal is upheld with costs including the costs of two counsel.
2. The decision of the court below is set aside and substituted as follows:
‘The appeal against the second respondent’s decision to grant the appellant an
extension of time for the filing of its counter-claim is dismissed with costs.’

_____________________
M S NAVSA
Acting Deputy President

APPEARANCES:

FOR APPELLANT:

G Hoffman SC (with him K P Iles)

Instructed by:

Adams and Adams, Pretoria

Honey Attorneys, Bloemfontein

FOR FIRST RESPONDENT:
C J Van der Westhuizen SC

Instructed by:

D M Kisch Inc., Pretoria

Webbers, Bloemfontein
THE SUPREME COURT OF APPEAL OF SOUTH AFRICA

MEDIA SUMMARY OF JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL

FROM

The Registrar, Supreme Court of Appeal

DATE

1 April 2016

STATUS

Immediate

Please note that the media summary is intended for the benefit of the media and does not
form part of the judgment of the Supreme Court of Appeal.

Trustco Group International (Pty) Ltd v Vodacom (Pty) Ltd (82/2015) [2016] ZASCA 56
(1 April 2016).

The Supreme Court of Appeal (SCA) today handed down judgment relating to the discretionary power
of the Registrar of Patents (registrar) to grant extensions of time periods within which any act or thing
is required to be done in terms of the Patents Act 57 of 1978 (the Act).

The appellant, Trustco Group International (Pty) Ltd (Trustco), the holder of South African Patent no
2010/03199, had failed to timeously pay prescribed patent renewal fees. That resulted in the lapsing
of the patent on 26 November 2011. Trustco applied for the restoration of the patent   in    terms     of
s 47(1) of the Act. In accordance with the prescribed procedure, the restoration application was
advertised in the Patent Journal on 26 June 2013. The application was opposed by the first
respondent, Vodacom (Pty) Ltd (Vodacom), which filed its notice of opposition on 26 August 2013.

Trustco’s counterstatement had been due on 26 October 2013, but since that day fell on a Saturday,
the counterstatement was due on 28 October 2013. On 30 October 2013 Trustco’s former attorneys
had requested a two-month extension of time from the registrar within which to file the
counterstatement. The registrar granted the extension against which Vodacom appealed to
Commissioner of Patents (Makgoba J).

Vodacom argued before Makgoba J that the provisions of regulation 83 of the Patent Regulations
(regulations) were peremptory and failure to comply with the time limit set by them – a
counterstatement shall be lodged within two months of notice of opposition – resulted in the deeming
provision being triggered. That meant that the application for restoration could rightly be considered to
be abandoned thus preventing the registrar from exercising the power of extending the time limit in
regulation 83, so Vodacom argued.

Makgoba J held that the registrar was authorised by s 16(2) of the Act to extend the time either before
or after the expiry of specific times except where it was otherwise expressly provided for in the Act
and regulations. Makgoba J held that this meant that the registrar was not given an unfettered
discretion to extend the time periods. He further held that the regulations had to be read conjunctively
with the Act having regard to the peremptory and deeming provisions of regulation 83.

Makgoba J consequently upheld Vodacom’s appeal with costs and declared the application by
Trustco for the restoration of the patent to have been abandoned. It was against those orders that the
appeal to the SCA was directed with the leave of the court below.

The SCA held that Makgoba J erred in his reasoning and conclusions, first, in that regulation 83 does
not in express terms or otherwise limit or in any way impinge on the registrar’s express remedial
power as provided for in s 16(2) of the Act.

The SCA further held that it is generally impermissible to use regulations created by a minister as an
aid to interpret the intention of the legislature in an Act of Parliament, notwithstanding that the Act
may include the regulations. The SCA held that a remedial power, such as the power to extend time
periods aimed at avoiding harsh results should be extended as far as the wording of a statutory
provision will admit.

The SCA held that the rule of statutory interpretation, that a specific provision overrides a general
provision, applies to provisions within the same legislative instrument and that a specific provision in a
regulation cannot override a general provision in a statute. As to read the Act ‘conjunctively’ with the
regulations and to construe the regulations in the manner resorted to by Makgoba J was in effect to
have the tail wag the dog.

The SCA found that the fear that had been expressed on behalf of Vodacom that a finding that the
registrar’s discretionary power provided for in s 16(2) of the Act was not limited by the provisions of
regulation 83 which would lead to uncertainty and hardships for those who ‘infringed’ a patent during
a period that might extend indefinitely; was not real in that s 66 of the Act restricts recovery of
damages for infringement of a patent and it provides that a patentee shall not be entitled to recover
damages from a defendant who proves that at the date of the infringement he was unaware and had
no reasonable means of making himself aware of the existence of the patent.

The SCA accordingly upheld that appeal with costs including the costs of two counsel. The decision
of Makgoba J was set aside and substituted with an order dismissing the appeal against the Registrar
of Patent’s decision to grant Trustco an extension of time for filing its counter-claim.

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