AMERICAN TELEPHON CO. ν. REG. OF TRADE MARKS (1987) 3 CLR 1978

(1987)3 CLR 1978 THE CYPRUS LAW REPORTS ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ CyLaw | Αναφορικά μ'εμάς | " target="_top">Επικοινωνία | Όροι χρήσης Έρευνα - Κατάλογος Αποφάσεων - Εμφάνιση Αναφορών (Noteup on) - Αρχείο σε μορφή PDF - Αφαίρεση Υπογραμμίσεων

(1987)3 CLR 1978 1987 November 8 (SAVVIDES J.) IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION AMERICAN TELEPHONE AND TELEGRAPH COMPANY OF U.S.A. Applicant. v. THE REGISTRAR OF TRADE MARKS. Respondent. (Case No. 980/85). Trade marks - American Telephone and Telegraph Company

(1987)3 C.L.R. 1966 adopted. Applicant's application for registration of the word «TELEPLAN» in Part A. Class 16 of the Register of Trade Marks in respect of printed matters related to telecommunications equipment was turned down by the Registrar of Trade Marks on the grounds that the proposed mark has direct reference to the character or quality of the goods contrary to the provisions of section 11

(1)(d) of Cap. 268; that it is riot distinctive in accordance with section 11

(1)(e) of the Trade Marks Law, and that it contravenes the provisions of section 13 of the Trade Marks Law. Cap. 268, in that it is likely to deceive or cause confusion. Hence this recourse. Held, dismissing the recourse: In the present case. on the material before this Court, bearing also in mind the reasons given in American Telephone and Telegraph Company v. Registrar of Trade Mars

(1987)3 C.L.R. 1966 and having carefully considered the contents of the decision of the Registrar and the reasons for his objection, this Court came to the conclusion that it was reasonably open to him to decide against the registrability of the trade mark in question. Recourse dismissed. Costs in favour of the respondent. Cases referred to: American Telephone and @@@. The Registrar of Trade Marks

(1987)3C.L.R. 19@@@ «TELECHECK». Trade Mark [1986] R.P.C. 77. Recourse. Recourse against the refusal of the respondent to register the word «TELEPLAN» in Part A, Class 16 of the Register of Trade Marks in respect of telecommunications equipment. Chr. Theodoulou, for the applicants. St. Ioannides (Mrs), for the respondent. Cur. adv. vult. SAVVIDES. J. read the following judgment. The applicant, a company incorporated in U.S.A., applied on the 28th September. 1984 for the registration of the word «TELEPLAN» written in capital letters as a trade mark in Part A, Class 16 of the Register of Trade Marks in respect of printed matters related to telecommunications equipment. A similar application was, submitted on the same day for the registration of the same trade mark in respect of telecommunications equipment. The application having been considered by the respondent was, on the 24th October. 1984, objected to on the grounds that (a) the proposed mark has direct reference to the character or quality of the goods, contrary to the provisions of section 11

(1)(

1. d)of Cap. 268. (
2. b)It is not distinctive in accordance with section 11

(1)(

1. e)of the Trade Marks Law. (
2. c)It contravenes the provisions of section 13 of the Trade Maks Law, Cap. 268, in that it is likely to deceive or cause confusion. In support of his objection under (a), the Registrar made reference to the meaning of the component words sought to be registered, «tele», and «plan», by reference to well known dictionaries and, in particular, to the Greek-English dictionary Odysseos, Hackh's Dictionary and Webster's Dictionary. Pursuant to the provisions of Ruanon 32 of the Trade Marks Rules, the applicants applied for a hearing before the Registrar, seeking for a review of his decision. At the hearing before the Registrar which was held on the 19th September, 1985, affidavits were producedon behalf of the applicants, to the effect that the trade mark in question had been registered in a number of countries and that there were pending applications for its registration in a number of other countries, including Great Britain. Also, that the products in question are known in Cyprus and have been used and sold since 1978 by the Hilton and Ledra Hotels in Nicosia and that they are advertised in Cyprus. Brochures were attached to one of the said affidavits in support of the contention about use and advertisement of the goods in Cyprus. The respondent by his decision which was communicated to the applicant by letter dated 14.10.1985 affirmed the objections previously raised by him. As a result, applicant filed the present recourse whereby he is challenging the sub judice decision and prays for its annulment. The present case is related to Case No. 981/85 American Telephone and Telegraph Company, v. The Registrar of Trade Marks concerning registration of the same trade mark in respect of telecommunications equipment, in which judgment has just been delivered. Both applications were submitted to the Registrar on the same day. The application in respect of telecommunications equipment was filed by the Registrar under No., 25528 and the application in the present case under the consecutive number 25529. Both applications present common questions of law and fact, the only difference, between them being that the one was in respect of telecommunications equipment and the present one in respect of printing material for such equipment. The two applications were heard by the Registrar on the same day and they were both refused on the same grounds. The material which was placed before the Registrar at the hearing was the same in. respect of both applications. In fact, the affidavits produced in the present case and the brochures attached thereto are copies of the affidavits produced in Application 25528 (the subject matter of Recourse No. 981/85). Also, the arguments advanced at the hearing before the Registrar were in both cases the same; Furthermore, the grounds of law raised in support of both recourses and the facts related thereto are verbatim the same. The same applies to the written addresses of counsel and no fresh arguments were advanced in this case other than those which had:already been advanced in Case No. 981/85. I therefore find it unnecessary to repeat the gist of their arguments, as same are explicitly mentioned in Case No. 98 1/85 and which I consider as forming part of the present case. As to the objection based on section 11

(1)(d) of the Trade Marks Law concerning the direct reference to the character and quality of the goods and the objection on the question of distinctiveness based on s. 11

(1)(

1. e)they have both been extensively dealt with by me in Case No. 981/85 (supra) and for the purposes of the present case I adopt what I said in that case as applying mutatis mutandis in the present case. The word «tele» is a well known and widely used word and is commonly used as a component form prefix to indicate, inter alia, distant, at a distance or over a distance. The word plan bears also a clear meaning and according to the dictionaries to which reference was made by the Registrar, it means plan, draft plan, programme, a method of achieving something, a way of carrying out a design, device. The combination of these two words can easily lead to the impression that the goods sought to be registered under this mark are in the nature of material for use in a telecommunications plan or part thereof and in the circumstances, it was reasonably open for the Registrar to reach the conclusion that they lack distinctiveness, they have direct reference to the character or quality of the goods and that they are likely to cause confusion under section 13 of the Law. In addition to the various authorities reference to which was made by me in Case No. 981/85, I find that useful reference may be made to the recent case of «TELECHECK» Trade Mark [1986] R.P.C. 77. In his judgment Mr. R.A. Pittock, acting for the Registrar, after having dealt with the clear grammatical meaning of the words «tele» and «check» went on as follows (p. 79 of the report): «As I have said, the word 'TeleCheck' has a very direct meaning when used in connection with printed matter relating to television. In addition to indicating, for example, a listing of television programmes for use in checking the details of certain programmes, if used in relation to a servicing manual or the like for tele4sion apparatus it very readily indicates the checks to, be made, etc., of, for example, the various functions of the equipment. Furthermore, Mr. Woodadvised me the mark is intended for use upon goods primarily related to a service which enables a credit rating to be quickly and accurately checked by means of a remote operation. If used in relation to such goods I am of the opinion the word 'TeleCheck' would, because of the common usage of the combining form prefix 'tele', be readily understood to indicate a remote (or distant) check, on credit ratings. Thus for these reasons I consider the word 'TeleCheck' is directly descriptive of a character of some of the goods included within the claim of the application and does not qualify for registration under paragraph (
2. d)of section 9

(1). With regard to the objection under section 9

(1)(e) it is necessary to decide whether or not the mark as a whole, that is to say the word 'TeleCheck' combined with the geometric device, possesses the required distinctiveness within the meaning of section 9

(2). In my view, it does not. The overwhelming feature of the mark is the descriptive combined words, not only because of their boldness in the mark but also because of the nondescript nature of the device. I have refrained from attempting to describe this device because of the difficulty I found in framing a simple description of it and I am confident the public would have similar difficulty. For this reason I believe the descriptive combined words will undoubtedly be the feature of the mark by which it will be known and referred to. I consider, therefore that the impact of the device in this composite mark is not sufficient to impart to the mark as a whole the required distinctiveness to overshadow the effect of the descriptive combined words and thus allow the mark, in its totality, to qualify for registration under section 9

(1)(e) of the Act.» On appeal it was found as follows (at pp. 80-8 1 of the report): «No criticism was made of page 2 of the decision and I agree with the conclusion that the word 'TeleCheck' is directly descriptive of a character of some of the goods included within the application. Whether or not Mr. Watson is correct in his submission depends on impression and I am not satisfied that he is right. The word 'TeleCheck' is very prominent and without evidence to support the applicants' case, I do not consider that it would be right to conclude that the combined device and word is capable of distinguishing when used in speech or when seen. I therefore agree with Mr. Pittock.» In the present case on the material before me, bearing also in mind the reasons given by me in my decision in Case No. 98 1/85 and having carefully considered the contents of the decision of the Registrar and the reasons for his objection. I have come to the conclusion that it was reasonably open to him to decide against the registrability of the trade mark in question Bearing in mind that this Court will not interfere with the decision of the Registrar nor will it substitute its own discretion to that of his, if such decision was reasonably open to him. I have reached the conclusion that the applicant has failed to show a good cause for interference by this Court with the decision of the Registrar. In the result the recourse fails and is hereby dismissed with costs in favour of the respondent. Recourse dismissed with costs in favour of respondent. cylaw.org: Από το ΚΙΝOΠ/CyLii για τον Παγκύπριο Δικηγορικό Σύλλογο