KimberlyClark of SA (Pty) Ltd v Proctor & Gamble SA (Pty) Ltd
[1998] 3 All SA 77 (A)
Division:
Supreme Court of Appeal
Date:
27 May 1998
Case No:
A488/96
Before:
Eksteen, Harms, Marais, Schutz and Plewman JJA
Sourced by:
JJF Hefer and I Potgieter
Summarised by:
S Moodliar
Parallel Citation:
1998 (4) SA 1 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
Interpretation of statutes Patents Act 57 of 1978 Section 51(10) Whether Commissioner of Patents may set aside
an amendment under section 51(10) on the grounds that the application to amend did not contain adequate reasons for
the proposed amendment Commissioner has no jurisdiction to review an amendment on such grounds Registrar
makes decision as to whether adequate reasons have been furnished and such decision is subject to common law review
within a reasonable time.
Patents Specification Amendment to Patents Act 57 of 1978 Section 51(10) Whether Commissioner of Patents
may set aside an amendment under section 51(10) on the grounds that the application to amend did not contain
adequate reasons for the proposed amendment Commissioner has no jurisdiction to review an amendment on such
grounds Registrar makes decision as to whether adequate reasons have been furnished and such decision is subject to
common law review within a reasonable time.
Editor's Summary
The Appellant instituted a patent infringement action and applied for a temporary interdict against the Respondent.
The Respondent entered an appearance to defend the action, opposed the application and applied for the setting
aside of three amendments which had been made to the The court a quo set aside all three amendments and the
Appellant appealed against this decision. The matter was settled between the parties and the Respondent
withdrew its opposition.
The main question before the Court was whether, upon a proper interpretation of section 51(10) of the Patents
Act 57 of 1978, the Commissioner of Patents could set aside an amendment because of inadequate reasons given
for making such an amendment. Section 51(1) stipulated that an application for
Page 78 of [1998] 3 All SA 77 (A)
amendment to a specification had to set out the nature of the proposed amendment and furnish full reasons
therefor. The court a quo held that noncompliance with section 51(1) could be raised in an application under section
51(10) and, if the reasons were found wanting, the Commissioner of Patents could set aside the amendment.
Held The Court held that the order of the court a quo had not been rendered academic by the settlement of the
litigation between the parties. The order affected the state of the specification and was an order in rem which
would have a bearing on other litigation still pending.
The Court examined previous cases and considered the language and the purpose of the Act. The Court held
that the adequacy of reasons provided under section 51(1) was for the Registrar of Patents to decide and section
51(10) did not create jurisdiction for the Commissioner to review such reasons. If the registrar's acceptance of the
reasons was to be attacked, such attack had to be made under common law review within a reasonable time.
The appeal was accordingly upheld.
Notes
For the Interpretation of statutes, see LAWSA (Vol 25, paragraphs 257311)
For Patents, see LAWSA (Vol 20, paragraphs 167)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
South Africa
Aktie Bolaget Astra Apotekarnes Kemiska Fabriker v Willows Francis Pharmaceutical Products Ltd 1959 (4) SA 1 (T)
Amalgamated Packaging Industries Ltd v Hutt and another 1975 (4) SA 943 (A)
Brelko CC and others v HansOtto Schwarze and others 1991 BP 100
Jaga v Dönges NO and another 1950 (4) SA 653 (A)
Lewis Berger and Sons Ltd v Svenska Ojeslageri Aktiebolaget 1959 (3) SA 604 (T)