AMER. TELEPH/TELEGR. CO. ν. REG. OF TR. MARKS
(1989)3A CLR 122 ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ CyLaw | Αναφορικά μ'εμάς | " target="_top">Επικοινωνία | Όροι χρήσης Έρευνα - Κατάλογος Αποφάσεων - Εμφάνιση Αναφορών (Noteup on) - Αφαίρεση Υπογραμμίσεων
(1989)3A CLR 122 1989 January 26 [A. LOIZOU, P.. MALACHTOS, DEMETRIADES. HADJITSANGARIS. CHRYSOSTOMIS, NIKITAS. ARTEMIDES, J.J.] AMERICAN TELEPHONE AND TELEGRAPH COMPANY, Appellants-Applicants, v. THE REGISTRAR OF TRADE MARKS, Respondents. (Revisional Jurisdiction Appeals Nos. 761. 762) Trade Marks - Registration - The Trade Marks Law, cap. 268, sections 11
(1)(d) and 13 - TELEPLAN in class 9 for telecommunications equipment and in class 16 for printed matter rightly rejected. Judicial control of exercise of administrative discretion - Principles applicable. The Registrar of Trade Marks rejected appellants' application for registration of the word TELEPLAN in the aforesaid classes, on the grounds that as the word TELE derives from the Greek word τηλε (which means far) and as the word PLAN conveys the notion of programme it had direct reference to the quality or character of goods (section 11
(1)(d)) and, moreover, it may cause confusion (section 13). The appellants (applicants before the Registrar) filed a recourse to this Court which was dismissed by a Judge of this Court. Hence the present revisional appeal. Held, dismissing the appeal:
(1)'Appellants' contention that as the word TELEPLAN means nothing to the ordinary Cypriot, who is not supposed to be conversed with the English language, the Registrar should not have rejected it and should not have consulted dictionaries,cannot stand, in view of this decision in Merck v. The Republic
(1972)3 C.L.R. 548.
(2)Whether a case is concerned with Registration in part A or in part B of the Register, distinctiveness in fact is not conclusive. There should, also, be distinctiveness in Law (York Trailer Holdings Ltd v. Registrar of Trademarks [1982] 1 ALL ER 257 at page 260 per Lord Wilberforce.)
(3)The sub judice decision was reasonably open to the Registrar. The combination of TELE and PLAN describes the nature of quality of the goods. TELE is internationally known and examples of its usage may be given by the ordinary man. e.g. television, telescope. PLAN conveys the notion of a system. Appeals dismissed. No order as to costs. Cases referred to: Merck v. Republic and Another
(1972)3 C.L.R. 548, "Solio"case [1898] A.C. 571, Philippartv. Whitely Ltd. [1908] 25 R.P.C. 565, York Trailer Holdings Ltd v. Registrar of Trade Marks [1982] 1 All E.R.257, In RE Davis's Trade Marks, Davis v. Sussex Rubber Co Ltd [1927] 2 Ch.345, Weldmesh Trade Mark [1965] R.P. C. 590, Re Liverpool Electric Cable Co. Ltd's Applications [1928] 46 R.P. C. 99, Jacovides v. Republic
(1966)3 C.L.R. 212, Impalex Agencies Ltd. v. Republic
(1970)3 C.L.R. 361, Psaras v. Ministry of Commerce and Industry
(1971)3 CL.R. 151. Appeals. Appeals against the judgments of a Judge of the Supreme Court of Cyprus (Savvides, J.) given on the 3rd November, 1987 reported in
(1987)3 C.L.R. 1966, dismissing appellants recourses against the decision of the Registrar of Trade Marks to object to two applications for the registration of the word "Teleplan" as a trade mark in part A of the Register. Chr. Theodoulou, for the Appellants. St. Ioannides, Counsel of the Republic B. for the Respondents. Cur.adv. vult. A. LOIZOU. P.: The judgment of the Court will be delivered by Artemides. J. ARTEMIDES, J.: The appellant-applicant, a company incorporated in U.S.A. appeals against the two judgments of a Judge of this Court, exercising the original jurisdiction of the Court, dismissing the recourse by means of which the appellant impugned the decision of the respondent, Registrar of Trade Marks, hereinafter to be referred to as "the Registrar", whereby he objected to two applications filed with him, for the registration of the word "TELEPLAN" as a trade mark in Part A of the Register. Appeal N. 761 refers to the proposed trade mark in Class 9. i.e. in respect of telecommunications equipment whereas Appeal No. 762 to the same mark but in class 16, that is for printed matter. In view of the fact that the factual background in the two recourses was almost identical and presented common issues of law, they were heard together but the learned trial Judge delivered two separate judgments. The exposition of the law is made in recourse No. 981/85 (Appeal 761) and adopted in recourse No. 980/85 (Appeal 762), whilst the different facts in the latter case, limited only to the proposed Class of registration are set therein. The facts leading to the sub judice decision of the Registrarmay be summarised as follows: On the 28th September, 1984, the two applications for the registration of the proposed trade name were duly filed by a representative of the appellant. The applications, having been considered by the Registrar, were objected to on the 24th October, 1984. The objection was based on the ground that the proposed name contravened the provisions of section II(I)(
- d)of the Trade marks Law, Cap. 268, in view of the fact that it had direct reference to the character or quality of the goods and lacked distinctiveness. Furthermore, it was contrary to the provisions of section 13 of the Law as it is likely to deceive or cause confusion. Counsel for the appellant applied, pursuant to the provisions of the Trade Marks Regulations 1951-1984 for a hearing, which was held on 19.9.1985. The Registrar heard the submissions of counsel, who had also filed evidence on affidavits but refused to waive his objections and communicated his final decision to the appellant on 11.10.1985. A great number of reasons was included in the notice of appeal but the address of counsel revolved on mainly two general grounds, in such a way that their exposition resulted in a rehearing of the recourses before us, since the same argument had been advanced at first instance and the trial judge dealt at length with each and everyone of the issues raised by the Appellant for the annulment of the sub judice decision. These grounds are that: (
- a)the learned trial Judge has failed to deal adequately with the argument of counsel that the decision of the Registrar was not duly reasoned and (
- b)the findings of the trial Court are erroneous in law. With regard to (
- a)the contention of counsel is totally unfounded. The trial Judge says explicitly in his judgement that he had examined carefully the reasons given by the Registrar for his objections, to the proposed trade name, which appear in his letters of 24.10.1984, to the appellant. Although these letters are in printed form, yet the contain the reasons for the decision of the registrar, who supplemented them in his own handwriting. Furthermore, the respondent makes specific reference to the relevant sections of the law, on which his decision is based, thus giving full notice to the appellant of thereasons of his decision and it is in fact on those that the cases both in this Court and below, have been argued. The Registrar gave identical reasoning for his objection to the two applications, namely that the proposed name "TELEPLAN" had direct reference to the quality or character of the goods and that it also lacked distinctiveness. Furthermore, it contravened the provisions of section 13 of the Law. The Registrar refers also to dictionaries to show that the word "TELE" derives from the Greek word "THAE" which means far and that the word "PLAN" conveys the motion of programme. The trial Judge, as we have already said, has dealt extensively with the principles of law relevant to the matter elaborating on English case Law and the authorities in our country. It would have been fruitless repetition on our part if we reiterated this ex position of the law. Counsel for the appellant has not referred us to any other principles of law, which were not before the trial Court, or has shown that those have been wrongly applied by it. He in fact repeated his address before the trial Court, and invited us to arrive at a different conclusion. His main argument being that the word "TELEPLAN" means nothing to the ordinary Cypriot, either Greek or Turk, since they are not supposed to be conversant with the English language. It was furthermore, inappropriate so the proposition of counsel proceeds, for the Registrar to consult dictionaries in order to elicit the meaning of the words "TELE" and "PLAN". In a nutshell, counsel's submission is that the word "TELEPLAN" is an invention of the appellant. This submission, however, is utterly wrong and counsel's perception of the principles of law involved erroneous. The above issue, and all the other points raised in his address, are dealt with in the case of Merck v. Republic and Another
(1972)3 C.L.R. 548, a judgment of Mr Justice A. Loizou, as he then was, now the President of this Court, who said the following, at page 563, referring next to leading English cases. "This brings me to the fourth ground relied upon by the applicant to the effect that the word is foreign, that it should not be examined in relation to its foreign meaning, but only whether in Greek it is an inventedword or not. Whether or not a word is an invented word, is of special importance, as only an invented word can be registered. A leading case on the subject, is The Eastman Photographic Materials Co. Ltd. v.The Comptroller- General of Patents, etc., better known as the "Solio"case [1898] A.C.
- I would like to refer to the passage from the speech of Lord Macnaghten, at page 583- "If it is an invented word - if it is 'new and freshly coined' (to adapt an old and familiar quotation) - it seems that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods. I do not think that it is necessary that it should be wholly meaningless". And Lord Herschell at page 581 said:- "Again, I do not think that a foreign word is an invented word simply because it has not been current in our language. At the same time, I am not prepared to go so far as to say that a combination of words from foreign languages so little known in this country that it would suggest no meaning except to a few scholars might not be regarded as an invented word". In the "Diabolo" case 42 Philippart v. Whitely Ltd. [1908] 25 R.P.C. 565, Parker, J. stated that - "before a word qualified as an invented word, it must not only be newly coined in the sense of not already being current in the English language, but it must be such as not to convey any obvious meaning to the ordinary Englishman". It is clear from the "SoIio"and "Diabolo"cases that the mere fact that the word exists in a foreign language, whether modern or classical, is not sufficient to exclude it if it really is invented. Yet, the fact that the word is a foreign word, does not make it an invented word. It should be takenwith the meaning that it reasonably conveys, and in the present case, it cannot be considered as an invented word." We endorse the above statement of the law. We wish, however, to make also a rather extensive reference to the case of York Trailer Holdings Ltd V. Registrar of Trade Marks [1982] 1 All E.R. 257 in which the House of Lords deals with the fine difference between the provisions of sections 9 and 10 of the Trade Marks Act 1938, which correspond to sections 11 and 12 of our law, Lord Wilberforce had this to say, at page 260 of the report: "Exactly what was the purpose of the first amendment (i.e. in distinguishing between 'adapted' and 'capable') is not entirely clear; judicial attempts have been made to clarify it. In RE Davis's Trade Marks, Davis v. Sussex Rubber Co Ltd [1927] 2 Ch 345 at 355-356 ('ustikon') Lord Hanworth MR, accepting that 'capable of distinguishing' might indicate a more benevolent test than 'adapted to distinguish', said that 'capable' might perhaps refer to the future, and his opinion was shared by the other members of the court,Sargant LJ (at 360) and Lawrence LJ (at 3636). A more sophisticated explanation was offered by Lloyd-Jacob in Weldmesh Trade Mark [1965] R.P.C. 590 at
- I do not think that further analysis of the two expressions is necessary on this occasion, because it is not this that is the critical distinction in the present case. Indeed reliance on it, and on the supposed greater liberality of the work 'capable' as opposed to 'adapted' by the judge constitutes, to my mind, the essential fallacy in his judgment and in the respondents' argument in this House. Even if s.10 indicated a greater liberality of approach than s.9, it is liberality in a direction which is irrelevant for present purposes." The conclusion in the judgment is that whether a case is concerned with Part A or Part B of the Register, distinctiveness in fact is not conclusive. It must also be so in law This answers another point taken by counsel for the appellant, namely that the Registrar should have informed the appellant whether he also objectedto registration in Part B. The Registrar, however, according to established practice,would have so informed the appellant if he had no objection. He has not done so and this means that he also objects to registration in Part B for the same reasons. Lord Wilberforce continues further down in the York case, to say the following, which squarely apply in the present: (page 261). "And there can be no doubt that exactly similar reasoning must be applied to the words (inherently capable of distinguishing' in s.10
(2)(a) of the 1938 Act. They mean, in effect 'capable in law of distinguishing', the relevant law being the accepted principle that, in relation to certain words, of which laudatory epithets and some geographical names were established examples, traders could not obtain a monopoly in the use of such words (however distinctive) to the detriment of members of the public who, in the future, and in connection with other goods, might desire to use them." He then makes reference to the case of Re Liverpool Electric Cable Co. Ltd's Applications [1928] 46 R.P.C. 99, adopting what Lord Hanworth said in that case, i.e. the following: "...when you come to regard the right of the public at large, the traders at Liverpool and the like, it appears to me that the Registrar would be quite right in holding that a word of that importance and significance ought not to be used or allowed to be treated as a word capable of distinguishing, because it has not merely to be capable in fact but it must be capable in law." In the present case the decision of the Registrar was open to him on a number of grounds. The prefix word "TELE" is an internationally known word in wide common use. Examples of its usage may even be given by the ordinary man, who knows the words television, telescope, telepathy, telephone, telegram, telex, etc. The word "PLAN" added conveys the motion of a system and the combination of the two words in "TELEPLAN" describes the nature or character of the goods. That this is so, is explicitly portrayed in theadvertising leaflets filed by the appellant with the Registrar in the application for the telecommunications' equipment, which incidentally is not connected with equipment only but mainly with services. So, on the advertising picture. No. 21, in the file of the applications, it is written: "Teleplan' another quality hotel service for our guests" and on picture 18: "Stay at a hotel featuring Teleplan. A program set up by AT & T that insures guests fair and reasonable telephone surcharges on all calls." The word therefore is not an invention of the appellant and if the applications were accepted, then the appellant would have had a monopoly in the use of the proposed name, a disagreeable situation which the law is aiming against. Counsel for the appellant has invited us to depart from english case law and apply the principles of administrative law, as same have been expounded in a wealth of authority of this Court. Again the matter is dealt with in the case of Merck, cited to above, where President Loizou had this to say, at p. 564: "The point, therefore, that arises for consideration, is the extent to which this Court will interfere with the exercise of administrative discretion. This matter has been the subject of judicial pronouncement in a number of cases (See, inter alia, JacovosJacovides v. The Republic
(1966)3 C.L.R. page 212, Impalex Agencies Ltd. v.The Republic
(1970)3 C.L.R. 361, and Psaras v.The Ministry of Commerce and Industry
(1971)3 C.L.R. 151). This Court will not interfere with such a discretion if due weight has been given to all material facts, it has not been based on a misconception of law or fact and it was not exercised in excess or abuse of power." This principle is well embedded in our law and remains unchanged. Our country has signed two conventions for the protection of industrial property ratified by The Convention for the Protection of Industrial Property (Ratification) Laws of 1965 and 1983 (63/65 and 66/83). If a comparison is made of the provisions of our Trade Marks Law, Cap. 268, with the above conventions, it will be seen that it is in complete accord with them, as again indicated, by A. Loizou, P. in the case of Merck for the 1965 Ratification Law, the only one then in[131]force. For the above reasons both appeals are dismissed but with no order as to costs. Appeal dismissed. No order as to costs. cylaw.org: Από το ΚΙΝOΠ/CyLii για τον Παγκύπριο Δικηγορικό Σύλλογο