CARRERAS LTD. ν. REG. OF TRADE MARKS (1989) 3A CLR 791

(1989)3A CLR 791 ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ CyLaw | Αναφορικά μ'εμάς | " target="_top">Επικοινωνία | Όροι χρήσης Έρευνα - Κατάλογος Αποφάσεων - Εμφάνιση Αναφορών (Noteup on) - Αφαίρεση Υπογραμμίσεων

(1989)3A CLR 791 1989 July 15 [STYLIANIDES, J.] IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION CARRERAS LIMITED, Applicants. v. THE REGISTRAR OF TRADE MARKS. Respondent. (Case No. 321/82) Constitutional Law - Laws in force at the time of the enactment of the constitution/recourse for annulment - Constitution. Arts, 146 and 188 - Law in force at such a time providing I or an appeal to the Court against a decision of an administrative character - Being inconsistent with Art. 146, such a Law was not saved by Art. 188 - The Trademarks Law, Cap. 268, section 19, providing for appeal and the whole section 50 determining the powers of the court under such appeal, were not saved by Art. 188. Judicial control - Trademarks - Approach of court - Interference by Court - Principles applicable - Court does not interfere, if decision was reasonably open to the Registrar, following due inquiry and lilt was not based on a misconception of Law or fact and it was not exercised in excess or abuse of power. Trademarks - Registration - The Trademarks Law. Cap. 268. section 21

(1)(b), empowering Registrar not to register, if the application has been accepted for advertisement in error. Trademarks - Registration - The Trademarks Law, Cap. 268 - Fact of registration in a foreign country - Weight to be attached thereto - It has little or no bearing on whether the mark is capable of distinguishing the goods of the applicant in this country. Trademarks - Registration - Distinctiveness - The Trademarks Law, Cap. 268, section 11

(1)(e) - Part A of the register - Burden of proof - After the Registrar objected on the ground that the mark in question was not inherently adopted to distinguish, such burden shifted to applicants - Extensive reference to authorities- Distinctiveness is the hall mark of registrabiility and the test for determining the likelihood of deception or confusion tinder section 13 of the Law. Trademarks - Registration - Part B of register - Practice that in an application for registration in part A of register the application may be treated as an application for registration in part B - Registrability in Part B - The Trademarks Law, Cap. 268, section 12 - Extensive reference to authorities. Trademarks - Function of trademark - It is to indicate the origin of the goods to which it is applied - Reference to authorities. Trademarks - Registrability - Device without wording - The Trademarks Law, Cap.

1. section 2 - Such a device fills within the definition of mark in section 2 - But not every mark is registrable - A mark to be registrable should fulfill the requirements of either section 11 or section 12 and not be contrary to section
2. Trademarks - Registration - Three-coloured labels for cigarettes in class 34 - Confusion - The Trademarks Law, cap. 268, section 13 - Its ambit is not limited to cases of similarity or competition between the proposed mark and another mark - Sufficient, if there is an inherent probability of confusion arising from the mark being used to distinguish two articles, which are essentially different in origin and may be wholly different in character and quality. Reasoning of an administrative act - Registration of Trademark - Lack of due reasoning - Ground for annulment - In this case the reasoning emerges clearly from the reasons for the decision as the material, in the file. In this case the applicants applied for the registration of a series of three-coloured labels trademarks as trademarks under class 34 in respect of cigarettes. The Registrar took objection to the mark in question on the ground that it was not distinctive as required by section 11

(1)(e) of Cap. 268 and that it contravened section 13 of the Law. The applicant's advocate informed the Registrar that the mark in question had been accepted in United Kingdom. The Registrar eventually accepted the mark for advertisement, but later on the Registrar revoked the decision under section 21

(1)(h) of the Law on the ground that it was made in error. The same as aforesaid original objections were taken anew. Following representations by the applicants, the Registrar reached the conclusion that the mark could not be registered under section 11

(1)(e) of the Law, as it had not become distinctive in fact in Cyprus. The Registrar further reached the conclusion that the mark could not be registered in Part B under section 12. In fact the refusal relating to Part B relied on the same reasons as the refusal to register it in part A. Finally the Registrar found that the provisions of section 13 of Cap. 268 were also offended. Hence this recourse. The various legal issues raised in this recourse appear sufficiently from the hereinabove Headnotes. The Court, in examining the question of distinctiveness as a prerequirement of registrability referred to and cited passages from the case law of English Courts. Recourse dismissed. No order as to costs. Cases referred to: I. W. S. Nominee Co. Ltd. v. Republic (Registrar of Trade Marks

(1967)3 C.L.R. 582, E. Merck v. Republic and Another

(1972)3 C.L.R. 548, White Horse v. El Grew (1987,) 3 C.L.R. 531, Curzon Tobacco Company Limited v. Republic (Official Receiver and Registrar Etc.)

(1975)3 C.L.R. 363, Needle-Tip Trade Mark [1973] R.P. C 113, Plough, Inc. v. Republic (l98S) 3 C.L.R. 145, "Weldmesh" Trade Mark 11965] R.P.C. 590, In the Matter of (lie Application of Henry Quennell Ld. for a Trade Mark [1954] 72 R.P.C. 36, "The International Society of Postmasters Trade Mark [1977] R.P.C.

1. Aristoc, Ld. v. Rysta. Ld. [1945] 62 R.P.C. 65, In re Powell's Trade Mark [1893] 2 Ch. 388, Bass Ratcliff and Gretton Ld. v. Nicholson and Sons Ld. [1932] A. C. 130, Bismag Ld. v. Amblins (Chemists) Ld. [1940] 1 Ch.
2. Recourse. Recourse against the refusal of the respondent to register a mark of cigarettes in Class
3. G. M. Nicolaides, for the Applicants. St. Ioannides (Mrs). Counsel of the Republic for the Respondents. STYLIANIDES, J. read the following judgment. By means of the present recourse the applicants challenge the refusal of the Respondent - Registrar of Trade Marks, (the "Registrar"), to register a mark for cigarettes in Class
4. The applicants, a limited liability company, incorporated in England. on 21st May, 1980, filed an application, under number 20679 for the registration of a series of three coloured labels trade marks as trade marks under Class 34, in respect of cigarettes. The Registrar took objection to the mark in question by letter of 18th June, 1980, on the ground that it is not distinctive as required by section 11

(1)(e) of the Trade Marks Law, Cap.' 268 (the "Law") and it contravenes section 13 of the Law. The applicants' advocate, by letter dated 30th July, 1980, informed the Registrar that there was a corresponding United Kingdom application, which was advertised on the 18th June, 1980, in the United Kingdom Trade Marks Journal, No. 5310 of 18th June, 1980, and enclosed a copy of such advertisement. Thereupon, the trade mark propounded for registration in Cyprus was accepted for advertisement and was advertised in the Official Gazette of the Republic, No. 1680, of 17th April, 1981, Supplement No. 5. p. 47. On 7th May, 1981, the Registrar by letter informed the applicants' advocate that, after further consideration, the acceptance for advertisement of the mark was revoked, under the provisions of section 2 1

(1)(b) of the Law, as it was made in error, and the same original objections were taken anew. The advocate of the applicants applies for a hearing, tinder Rule 32 of the Trade Marks Rules 1951-71. The applicants did not claim that their mark had, by reason of use or of any other circumstances in fact become distinctive in Cyprus for their goods, but they based their claim for registration in Cyprus on the fact that it had been accepted and advertised in the United Kingdom. The Registrar took the view that the registration abroad is of secondary significance. Having considered the mark propounded for registration, in the light of the above, the Registrar reached the conclusion that it was not entitled for registration, under section 11

(1)(e) of the Law, as it had not become distinctive in fact in Cyprus. He, then, considered whether the mark would be acceptable for registration in Part B of the Register, under section 12. Registration in Part B was, also, refused, for the same reasons for which the mark was not registrable in Part A. He decided that the said mark could not be capable of distinguishing those goods from similar goods of other traders, who might wish to use it in the course of their trade. He, also, found that the mark offended against the provisions of section 13, because if registered there will be a real danger of confusion among members of the public as to the trade origin of the goods. The grounds of the Registrar's decision were communicated to counsel for the applicants on the 31st July, 1982, and as a result the present recourse was filed. Rival arguments were advanced on the powers of this Court in a recourse seeking annulment of a decision of the Registrar. Learned counsel for the applicants, relying on section 50 of the Law, which provides that: "In any appeal from a decision of the Registrar to the Court under this Law, the Court shall have and exercise the same discretionary powers as under this Law are conferred upon the Registrar", section 8

(2)of the English Act of 1919 and section 52 of the English Trade Marks Act, 1938, submitted that this Court has, in exercise of its revisional jurisdiction in trade marks recourses, the power conferred on it by the aforesaid statutory provision. Counsel for the Registrar, on the other hand, submitted that the powers of the Court, in determining a recourse of this nature, are not different to those for any other recourse, under Article 146 of the Constitution, and that section 50 of the Law, enacted in 1951, ceased to be in operation, under Article 188 of the Constitution. The matter, not only is not devoid of authority, but there is a plethora of Judgments of this court on it. Proceedings before the Registrar under the law are of administrative character, notwithstanding their semblance with judicial proceedings. The Registrar, in the exercise of his powers under the law, exercises an administrative authority in the sense of paragraph 1 of Article 146 of the Constitution for a public purpose in the domain of public law. A decision of the Registrar is an administrative decision in the domain of public law amenable to the Revisional Jurisdiction, introduced in this country by Article 146 of the Constitution. The part of section 19, providing for appeal, and the whole section 50 of the Law, being inconsistent with a recourse under Article 146, were not saved by Article 188 and are not in force - (I. W.S. Nominee Co. Ltd. v. Republic (Registrar of Trade Marks

(1967)3 C.L.R. 582; E. Merck v. Republic and Another

(1972)3 C.L.R. 548, at p. 557). The powers of the Supreme Court as an Administrative Court are well settled. It is a well established approach of our Supreme Court, on the basis of the principles governing the exercise of its jurisdiction as an Administrative Court in the first instance and on appeal, that it does not interfere with an administrative decision regarding the registrability of a trade mark, if such decision is reasonably open to the Registrar and does not substitute its own evaluation in the place of that of the Registrar - (White Horse v. El Greco

(1987)3 C.L.R.

1. at p.
2. where the previous Case Law is cited). This Court does not interfere with the exercise of administrative discretion by the Registrar 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 - (Merck v. Republic (supra) at p. 564). The recourse is based on the following grounds of law:-
3. The Respondent, although he invariably inquires if the proposed for registration mark is registered in the United Kingdom, as such registration is of persuasive nature and effect, yet in this case he completely ignored such existing registration in the United Kingdom.
4. The Respondent failed to consider whether the proposed for registration mark was inherently adapted to, or capable of distinguishing the applicants' goods.
5. The Respondent acted under a misconception of Law and/or fact and misdirected himself and/or proceeded on wrong principles in arriving at his decision.
6. The Respondent exercised his discretion wrongly and the sub judice decision is not duly reasoned. Counsel for the applicants complained that the Registrar, though accepted the trade mark propounded for advertisement, later revoked his acceptance. The Registrar is empowered by section 21

(1)(b) not to register if the application has been accepted in error. In Curzon Tobacco Company Limited v. Republic (Official Receiver and Registrar Etc.)

(1975)3 C.L.R. 363, it was said at p. 368:- "It is quite apparent from the wording of this section that the Registrar has power to refuse registration even though the application has been accepted in the first instance and there has been no opposition to the registration if such application has been accepted in error. It is significant that under rule 53 of the Trade Marks Rules 1951 entry in the Register after the expiration of two months from the date of the advertisement in the Gazette is made subject to the determination of any opposition and also subject to the provisions of section 21

(1). Furthermore both the initial acceptance and the advertisement of the application are merely interim, measures leading to the final act, the registration of the trade mark, and in view of this and of the express provision in the law it is not correct to say that under administrative law it was not open to the Registrar to withdraw his acceptance." It was contended by counsel for the applicants that the Registrar erred in law and acted on wrong principle by not attaching a lot of importance to the fact that the proposed mark was accepted and/or registered m the United Kingdom, whereas counsel for the Registrar maintained that a foreign registration in a foreign country has little or no bearing on whether the mark is capable of distinguishing the goods of the applicants in this country. The provisos, to sections 11

(1)and 12

(2), which provided that registration in the United Kingdom in Part A or Part B, respectively, together with a representation thereof, shall be prima facie evidence of distinctiveness of such mark, were repealed by section. 2 of the Trade Marks (Amendment) Law, 1962 (Law No. 63/62). Both sides referred the Court to the Needle-Tip Trade Mark [1973] R.PC. 113. The Registrar, also in the "Grounds of Decision" relied on the same case. At p. 118 of the report we read:- "It seems to me that the mere fact that a mark has been registered in a foreign country has little or no bearing on whether the mark is capable of distinguishing the goods of the applicant in this country. Registration in the foreign country will have been allowed according to the law and practice in that country which may differ from that of this country and may have been allowed in the light of particular circumstances and trading conditions in that country and which may be very different to those obtaining in this country. It may be that, in a case where a mark applied for here has already been registered in a foreign country with a system of trade mark law similar to our own, if a written decision of the foreign tribunal allowing registration in the foreign country and which showed the grounds of the decision and the matters taken into consideration were to be adduced on the application here, it might be persuasive as a piece of reasoning as to whether the mark should be registered here, if but only if, similar considerations applied in this country; but that, it seems to me is as far as registration in a foreign country could be relevant to registrability here. It is to be noted that in Swifts' case the Divisional Court was influenced by what was referred to as 'a scholarly and persuasive judgement of the Full Court of the High Court of Australia'. On the present appeal, however, all that has been relied upon is the mere fact of registration in the countries mentioned and that mere fact, as I have already stated, is of little or no bearing on whether the mark is capable of distinguishing the applicants' goods in this country." In Plough, Inc. v. The Republic of Cyprus, through The Registrar of Trade Marks

(1988)3 CL;R. 145 it was held that registration of a mark in a foreign country is of no consequential significance in proceedings for registration in Cyprus, as well as whether the mark is capable of distinguishing the goods covered by such mark in this country. Kerly's Law of Trade Marks and Trade Names, Twelfth Edition, p. 123., paragraph 8-68, which reads as follows; was adopted: "Use or registration abroad On an application to register a mark for use in the United Kingdom, it is distinctiveness in the United Kingdom that is in question. Thus extent of registration and use of the mark abroad are of secondary significance, if any." In the present case the applicants relied solely on the mere fact of registration in the United Kingdom. No written decision was produced to show the grounds of the decision and the matters taken into consideration. No sufficient particulars to illuminate the background to the foreign registration on the decision were adduced. The Registration in the United Kingdom was accepted without evidence of use, as inherently distinctive. The Registrar did not misdirect himself as to the law and his decision on this point was properly taken. The Registrar raised objection that the trade mark in question lacks distinctiveness contrary to section 11

(1)(e) of the Law. Section 11

(1)(e) of the Law provides as follows:- "11.

(1)In order for a trade mark to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:- (

1. e)any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (
2. c)and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness:" Sub-section

(2)gives a statutory definition on interpretation of "distinctive" as follows:- "

(2)For the purposes of this section 'distinctive' means adapted in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration." Section 11

(3)reads as follows:- "

(3)In determining whether a trade mark is adapted to distinguish as aforesaid the Registrar may have regard to the extent to which - (

1. a)the trade mark is inherently adapted to distinguish as aforesaid; and (
2. b)by reason of the use of the trade mark or of any other circumstances the trade mark is in fact adapted to distinguish as aforesaid." The burden of proof, after the Registrar examined whether such mark was inherently adapted to distinguish but he objected and refused to register, shifted on the applicants. In Kerly's Law of Trade Marks and Trade Names, Twelfth Edition, at pp. 100-101, paragraph 8-43 we read:- "Inherent distinctiveness To be inherently adapted to distinguish, a word must be one which, as a word, is adapted to distinguish the goods, and not a word which may by user acquire the capacity of distinguishing the goods. The Act means that a trader may take a word which from something in the word itself - say the fact that no one had ever heard the word before, that it was an invented word, or that it indicated the particular trader as distinguished from another trader, but always from something found in the word itself as distinguished from the way in which it is used - is such as to answer the description of being adapted to distinguish the goods. 'By 'inherently adapted' I take the Act to mean adapted of itself, standing on its own feet.' The House of Lords has adopted a somewhat different approach, which seems more appropriate to the evaluation of the factor of inherent distinctiveness in cases of marks shown to be distinctive in fact: 'However, long before the reference to inherent adaptability had been incorporated in the current statutes dealing with trade marks, it had been held upon grounds of public policy that a trader ought not to be allowed to obtain by registration under the Trade Marks Act a monopoly in what other traders may legitimately desire to use. The classic statement of this doctrine is to be found in the speech of Lord Parker in the W. & G. case [1913] 430 R.P.C. 660 at page 672 where he said that the right to registration should largely depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. The reference to 'inherently adapted' in section 9

(3)of the Consolidation Act of 1938, which was first enacted in 1937, has always been treated as giving statutory expression to the doctrine as previously stated by Lord Parker.' Thus the mere proof or admission that a mark does in fact distinguish does not ipso facto compel the judge to deem that mark to be distinctive. It must further be 'adapted to distinguish, which brings within the purview of his discretion the wider field of the interests of strangers and of the public." In paragraph 8-41, p. 99 we read:- "... the Registrar, in considering an application to register a mark, must consider both its inherent adaptation (i.e. aptitude) to distinguish and also the extent to which it is shown by evidence (if there is such evidence) to be distinctive:" The Registrar in the 'Grounds of Decision" says:- "10. Having therefore, carefully considered the mark propounded for registration in the light of the above considerations, I have come to the conclusions that it is not entitled for registration under the provisions of section 11

(1)(e) of the Law, as it has not become distinctive in fact, in Cyprus." This finding means that the mark propounded was not entitled for registration under the provisions of section 11

(1)(e) and that it has not become distinctive. Further it implies that in fact and in substance the trade mark propounded is not inherently adapted to distinguish under section 11

(3)(a), because if it were found to be inherently adapted to distinguish it would have fallen within the provisions of the other paragraphs of section 11

(1)and would have been registered. Distinctiveness is the hall mark of registrability and the test for determining the likelihood of deception or confusion under section 13 of the Law. Counsel for the, applicants argued tit the Registrar failed to examine the possibility of distinctiveness per Se. This runs counter to the contents of the file and the "Grounds of Decision". He, further, submitted that the Registrar, under section 19

(3)of the Law, in the case of an application for registration of a trade mark in Part A of the Register, may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part B and deal with the application accordingly. This is an invariable practice of a Registrar, which it was followed in the present case. It was argued that the Registrar did not apply the proper criterion, as set out in the Law, under section 12. Section 12

(1)reads:- "12.

(1)In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration." In Halsbury's Laws of England; Fourth Edition, Volume 48 paragraph 54, we read:- "(iii) Registration in Part B 54. Requirements for registration in Par B. In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to a limitation, in relation to use within the extent of the registration. In determining whether a trade mark is capable of distinguishing as aforesaid the tribunal may have regard to the extent to which the trade mark is inherently capable of distinguishing as aforesaid, and by reason of the use of the trade mark or of any other circumstances the trade mark is in fact capable of distinguishing as aforesaid. Virtually all of the considerations described in relation to Part A apply to registrability in Part B. However, there is no statutory requirement as to evidence, although evidence may assist in overcoming low inherent capacity to distinguish. Even if a mark is in fact totally distinctive, it does not follow that it is capable of distinguishing in law. The need for a balance between the public interest and the private rights involved in considering the question of distinctiveness for Part A applies equally in the case of Part B, although in the case of Part B the tribunal may have a greater regard to the future capacity of the mark to distinguish in fact. In practical terms it is easier to obtain Part B registration and there have been a number of cases where registration has been allowed in Part B, but disallowed in Part A. There is power for an application in Part A to be treated as an application for Part B, and so most applications are initially made for Part A, dropping to Part B during negotiations with the registrar if necessary. It is common for marks initially registered in Part B in the absence of any use to be registered later in Part A when they have acquired sufficient use to be distinctive for the purpose of registration in Part A." In "Weldmesh" Trade Mark [1965] R.P.C. 590 at p. 595 it was said:- "Section 10 and Part B of the register are concerned with an alternative method of registration for marks which can be shown to be capable of distinguishing the goods of the proprietor, and this is secured by proof of the development of a secondary meaning which outweighs the apparently non- distinctive character of the mark when viewed in isolation. It is, therefore, not unreasonable to regard the two expressions 'adapted to distinguish' and 'capable of distinguishing' as being deliberately chosen so as to direct the particular enquiry aright the former emphasising that it is because of the presence of a sufficient distinguishing characteristic in the mark itself that distinctiveness is to be expected to result whatever the type and scale of the user and thus secure an estimation of a positive quality in the mark; and the second that, in spite of the absence of a sufficient distinguishing characteristic in the mark itself, distinctiveness can be acquired by appropriate user, thereby overcoming a negative quality in the mark." The requirements of a mark to be registrable in Part B are set out in our section 12, afore quoted, which corresponds to section 10 of the English Act. Those requirements were considered by Lloyd-Jacob, J., In the Matter of the Application of Henry Quennell Ld. for a Trade Mark [1954] 72 R.P.C. 36, at p. 37:- 'That leaves remaining the question as to whether or not this is an application suitable for registration in Part B of the Register. In respect of that part of the application, the decision was criticised on the ground that the approach to the problem as expressed in the decision was contrary to the authorities; and it is, I think, arguable that the language used may be susceptible to some such criticism. The requirements of Sec. 10, shortly stated, to enable a trade mark to be registered are that the applicants must satisfy the tribunal that the mark is capable of distinguishing the goods to which it will be attached; and the section indicates that the nature of the investigation may fall into one or other of two specified inquiries. The first, set out under Sub-sec.

(2)(a), is that the trade mark is to be inherently capable of distinguishing; and in Sub-sec.

(2)(b) it is to be in fact capable of distinguishing. So far as concerns the first of those requirements, in my judgement the matter falls to be considered solely by examination of the mark applied for; that is to say, that irrespective of the peculiarities, if any, of the trade (which may of themselves provide either capacity to distinguish or, alternatively, may limit the field in which distinctiveness requires to be examined), Sub-sec.

(2)(a), in my judgement, requires consideration solely of the mark itself. Putting it in another way, irrespective altogether of any peculiarities of the trade or the practice of other traders, is the word such that, on examination, it is shown to possess the capacity of distinguishing the goods to which it is applied? If, as in this case, the word is regarded as having a direct reference to the character of the goods, as at present advised I am unable to see how that conclusion enables any result favourable to the Applicants to be arrived at so far as concerns the first of the two methods of examining into the capacity to distinguish." In "The International Society of Postmasters "Trade Mark [1977] R.P.C. 373, at p. 378 it was said:- "In her decision the hearing officer considered whether the applicants' mark could be accepted in Part B of the register but concluded that it was not capable of distinguishing the applicants' goods. It was argued on this appeal that even if the mark was regarded as failing to qualify under section 9 for registration in Part A, nevertheless the mark was capable of distinguishing the applicants' goods and should be accepted in Part B of the register. The matters to be considered in determining whether a mark is capable of distinguishing the applicants' goods are set out in section 10

(2)of the Act. As there is no evidence of use of the mark and no 'other circumstance' was relied upon (vide paragraph (b) of section 10

(2)), I have only to consider the mark's inherent capability of so distinguishing (paragraph (a) of section 10

(2)). The highly descriptive nature of this mark, which disqualifies it under section 9, for the reasons I have endeavoured to explain above, in my view render it inherently incapable of distinguishing the applicants' goods. That being so the mark does not qualify for registration in Part B." The Registrar did not err in law. He did not, also, fail to take into consideration everything that he should have done. It was, also, submitted on behalf of the applicants that the Registrar wrongly referred to the "origin" of the goods and to a tangible confusion among the members of the public. It must be born in mind the function of a trade mark which is to indicate the origin of the goods to which it is applied. This is fundamental in this branch of the Law. In Aristoc Ld. v. Rysta Ld. [1945] 62 R.P.C. 65, it was said by Lord MacMillan at p. 79:- "As it was expressed by Bowen L.J. in In re Powell's Trade Mark [1893] 2 Ch. 388 at pp. 403-4: The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods - to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market.' I could multiply quotations to the same effect. I was merely repeating a commonplace when on a former occasion I said in this House that it is 'of the essence of a trade mark that it should indicate origin and be used as indicative of origin' (Bass Ratcliff and Gretton Ld. v. Nicholson and Sons Ld. [1932] A.C. 130 at pp. 154-5). It is true that these pronouncements were made before the passing of the Act of 1938 and that this Statute enacted a new definition of a trade mark in the words which I have quoted and also in Section 4, when defining the right given by registration, used new language, namely, that registration of a person as the proprietor of a trade mark in respect of any goods would give that person 'the exclusive right to the use of the trade mark in relation to those goods.' But I do not agree that thereby 'a radical alteration in the law relating to trade marks' has been effected on that there has thereby been conferred 'a right crucially different in principle from the rights heretofore enjoyed by the owners of trade marks,' as the Masters of the Rolls and Clauson L.J. held in Bismag Ld. v. Amblins (Chemists) Ld. [194011 Ch. 667 at pp. 677 and

1. I do not think that the widened language of the 1938 Act has inferentially altered the essential conception of a trade mark in law and in this I agree with and prefer the judgements in the Bismag case of my noble and learned friend then Simonds J. (1940, 1 Ch. 225) and MacKinnon L.J. whose reasoning I need not repeat. A trade mark must still be registered in respect of goods, it must be used in relation to goods, it must indicate a connection in the course of trade between goods and the user of the trade mark. A trade mark must thus be used in trade. 'Trade' is no doubt a wide word but its meaning must vary with and be controlled by its context. A connection with goods in the course of trade in my opinion means in the definition section an association with the goods in the course of their production and preparation for the market. After goods have reached the consumer they are no longer in the course of trade. The trading in them has reached its objective and its conclusion in their acquisition by the consumer." Finally counsel for the applicants argued that the device without a wording falls within the definition of mark in section 2 of the Law. This is not contested by the Registrar. It is, however, true that it is not every mark that it is registrable. It has to comply with and fulfill the requirements of, either section 11, or section 12 and not to be contrary to section
2. The likelihood of confusion existed. The precise scope of section 13 is not easy to define, but it is certainly not limited in its operation to cases of similarity or competition between the proposed mark and another mark. It is sufficient if there is an inherent probability of confusion, arising from the mark being used to distinguish two articles which are essentially different in origin and may be wholly different in character and quality - (Aristoc. Ld. (supra)). The sub judice decision is challenged on the ground that it lacks, due reasoning. It is well settled that the reasoning of an administrative decision must be clear and adequate in order to enable an Administrative Court to exercise judicial control. The lack of due reasoning is in itself a sufficient ground for the annulment of an administrative decision. The reasoning emerges clearly from the reasons for decision and the material in the file. To recapitulate, I have come to the conclusion that the Registrar did not misdirect himself as to law; he carried out a due inquiry; he did not act under a misconception of fact or excess or abuse of power and the sub judice decision is fully reasoned. The sub judice decision was reasonably open to the Registrar. For the aforesaid, the recourse falls and is dismissed. Let there be no order as to costs. Recourse dismissed. No order as to costs. cylaw.org: Από το ΚΙΝOΠ/CyLii για τον Παγκύπριο Δικηγορικό Σύλλογο