ROLLS-ROYCE MOTORS LTD ν. REPUBLIC
(1989)3A CLR 930 ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ CyLaw | Αναφορικά μ'εμάς | " target="_top">Επικοινωνία | Όροι χρήσης Έρευνα - Κατάλογος Αποφάσεων - Εμφάνιση Αναφορών (Noteup on) - Αφαίρεση Υπογραμμίσεων
(1989)3A CLR 930 1989 August 10 [SAVVIDES, J.] IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION ROLLS-ROYCE MOTORS LTD, Applicants, v. THE REPUBLIC OF CYPRUS, THROUGH THE REGISTRAR OF TRADE MARKS, Respondent. (Case No. 489/88) Trademarks Registration - The Paris convention for the Protection of Industrial Property as revised in Lisbon
(1958)and Stockholm
(1967)ratified by Law's 63/65 and 66/83, Art. 6. Quinquies, (B)
(2)Refusal of registration of Trademark based on section 11
(1)(e) of the Trademarks Law, cap. 268 on ground of lack of distinctiveness - As it coincides with the said sub-paragraph of Art. 6 of the convention, there was no need for the Registrar to examine the application tinder the convention as well. Trademarks - Registration - The Trademarks Law, Cap. 268, section 11
(1)(e) and section 12 - Registration in a foreign country - Weight - It is of no consequential significance. Trademarks - Registration - Use in Cyprus - A fact that may be taken into consideration, but it is not by itself the criterion which may weigh the scales in favour of registration. Judicial control - Registrability to Trademark - Interference by Court - Principles applicable - The court does not interfere if the decision complained of was reasonably open to the respondent. The applicants applied for registration in class 12 of part A of the Register of Trademarks of their Trademark consisting of a Radiator Grille (device), which had been registered in the country of origin, namely U.K., since 1975 in respect of motor vehicles, their engines chassis and other parts. There was one sale of a Rolls Royce car identified by the aforesaid Trademark. Finally, the Registrar rejected the application for the registration on ground of lack of distinctiveness. He based his decision on sections 11
(1)(e) and 12 of the Trademarks Law, Cap. 268. The applicants complained that the Registrar failed to apply the aforesaid Convention. It should, however, be noted that the matter of the Convention had not been raised before the Registrar. During the hearing before the Registrar applicants' Counsel added that the initials R.R. are not part of the mark. In the light of the principles enunciated in the hereinabove Headnotes the Court dismissed the recourse. Recourse dismissed. No order as to costs. Cases referred to: Plough Inc. v. republic
(1985)3 C.L.R. 1687, Maison Prunier v. Prunier's Restaurant and Cafe Inc. etc. [1936] 288, E. Merck v. Republic & Another
(1972)3 C.L.R. 548. Plough Inc v. Republic
(1988)3 C.L.R. 145, Curzon Tobacco Co. Ltd. v. Republic
(1975)3 C.L.R. 363, Curzon Tobacco Co. Ltd. v. Republic
(1979)3 C.L.R. 151, Stavrinides Clothing v. Republic
(1983)3 C.L.R. 98, Peletico Ltd. v. Registrar of Trade Marks
(1986)3 C.L.R. 490, Societe National Elf Aquitaine v. Registrar of Trade Marks
(1987)3 C.L.R. 1420, Blue Bell Inc. v. Registrar of Trade Marks
(1987)3 C.L.R. 542, American telephone and telegraph Company v. registrar of Trade marks
(1987)3 C.L. R. 1966, White Horse Distillers Ltd. v. El Greco Distillers Ltd. and Others
(1987)3 C.L.R. 531, Needle-tip Trade Mark [1973] R.P.C.
- Recourse. Recourse against the refusal of the respondent to register applicants' trade mark as shown in their application dated 8th October, 1986 in class 12 of part "A" of the Register of Trade Marks. A. Dikigoropoulos, for the Applicants. L. Koursoumba (Mrs), Counsel of the Republic B, for the Respondent. Cur. adv. vult. SAVVIDES, J. read the following judgment. The applicants by the present recourse seek a declaration that the act and/or decision of the respondent Registrar of Trade Marks to refuse to register applicants' trade mark as shown in their application dated 8th October, 1986, in class 12 of part 'A' of the Register of Trade Marks communicated to applicants under cover of a letter dated 22nd March, 1988, is null and void and of no effect whatsoever as being made and/or taken contrary to the provisions of the law and/or of the constitution and in excess and/or abuse of the powers vested in the Registrar of Trade Marks. In the letter, exhibit 10, dated 22nd March, 1988, the reasoned decision of the respondent is attached. The facts relevant to the case are as follows: Applicants are a company of limited liability incorporated in the U.K. under the relevant provisions of the Companies Law, trading in motor vehicles, their engines, chassis and other parts thereof. They are the registered owners of Trade Mark No.1034 118 (R.R. Radiator Grille (Device)) in their country of origin, the U.K., since
- Applicants' aforesaid trade mark has been registered also in various other countries including countries of the Commonwealth. By an application dated the 8th October, 1986, applicants requested the registration of their aforesaid mark in class 12 of Part 'A' of the Registrar in respect of the goods referred to therein. The application having been considered for acceptance was on the 18th October, 1986, objected to under s.11
(1)(e) of Cap. 268 (as amended) on the ground that the mark propounded for registration was not distinctive and also on the ground that the said mark was contrary to the provisions of s. 13 of Cap.268 (as amended). On 2nd June, 1987, a considered reply was filed with the Registrar's office accompanied by an affidavit sworn by the Secretary of the applicants to which there was attached a schedule setting out the countries of the Commonwealth and other foreign countries in which the trade mark in question was registered and also the countries in which applications for registration were pending. Also a record of goods sold in Cyprus displaying the trade mark in question, which in fact consisted of one sale of a Rolls-Royce car identified by the RR. Radiator Grille, in December 1982 at the value of £40,
- As the objections taken by the Registrar could not be waived the applicants were informed by the respondent that under Regulation 32 of the Trade Marks Regulations 1951-1984 they could seek a hearing if they wanted to pursue the application further and in consequence a hearing was fixed on the 8th December,
- At the hearing the Registrar heard the arguments put forward by the applicants and considered the evidence adduced. A copy of registration of the mark in the U.K. was filed at the said hearing. Taking into account and weighing all legal and factual aspects of the case the Registrar held on the 7th March, 1988, that the mark/device propounded for registration was neither adapted to nor capable of distinguishing the applicants' goods and the application was, therefore, refused under s.19
(2)of the Trade Marks Law, Cap.268 (as amended) because the mark/device failed to satisfy the requirements of s.11 and s.12 of the relevant law. In his judgment the respondent Registrar dealt extensively both with the factual and legal aspect of the case on which he relied in reaching his decision. By letter dated 22nd March, 1988, the reasoned decision of the Registrar was communicated to applicants' counsel. Learned counsel for applicants in his elaborate address, after making extensive reference to the relevant provisions in the law and the Case Law on the matter as well as to the corresponding provisions under the English Law and the principles emanating therefrom as expounded in Kerly's Law on Trade Marks and Trade Names, submitted that the decision of the respondent Registrar complained of was taken upon a misconception of both the law and the facts of the case in that he failed to study and if necessary interpret the law applicable to the issue before him, ascertain the relevant facts including the extent of applicants use of the mark in Cyprus and apply the correct law to the facts. Also that he misdirected himself upon the true meaning of s. 11 and s. 12 of Cap.268 and was wrong in law and/or in fact in concluding that applicants' application in respect of their said trade mark fell under the aforesaid statutory provisions. The second leg of counsel for applicants' argument was based on International Conventions ratified in Cyprus and in particular the Paris Convention for the Protection of Industrial Property as revised in Stockholm in 1967 and submitted that the responded misdirected himself upon the law applicable and that he confined his inquiry into the statutory provisions of Cap.268 only ignoring completely the relevant provisions of Laws Nos.63/65 and 66/83 whereby the provisions of the Paris Convention for the Protection of Industrial Property as revised at Stockholm in 1967, were enacted as part of the law of the Republic of Cyprus and which by reason of the provisions of Article 169.3 of the Constitution have as from their publication in the Official Gazette of the Republic superior force to the provisions of Cap.268. Learned counsel further added that the respondent Registrar failed to evaluate properly the relevant statutory provisions and did not appreciate that applicants can obtain a Cyprus Trade Mark registration under the provisions of the Convention without alleging use of their trade mark in Cyprus because applicants have a U.K. registration of their trade mark. Before dealing with the arguments of learned counsel for the respondent I wish to mention that the provisions of the Convention were not raised or argued before the Registrar at the hearing of the case before him. Counsel who appeared for applicants at the hearing, according to the record in the relevant file before me, said the following: "
(1)The applicant company has used the said trade mark the subject of this application continuously for many years in respect of the goods applied for registration. The sales of the said goods in Cyprus under the trade mark RR. Radiator Grilled (Device) are shown on the exhibit 'A' attached to the affidavit already filed sworn by Mr. John Smith.
(2)The company has registered the trade mark RR. Radiator Grille (Device) in the U.K. under No. 1034118 and others after filing evidence of its distinctiveness through use in the U.K.
(3)The company has registered the trade mark RR. Radiator Grille (Device) in countries of the Commonwealth having a similar Trade Mark Law and procedure as in Cyprus. The affidavit sworn by John Smith, Secretary of the applicants referred to was filed with you on let June,
- We are enclosing a photocopy of the certificate of registration in the U.K. as requested in your letter of November 6,
- For all the above reasons we submit that the mark is sufficiently distinctive for registration in Part A of the Register." Then the record goes as follows: "Assistant Registrar of Trade Marks: I note that on the representation of the mark there are no 'RR' letters. Mr. Xenophontos: That is so. As you will see irom the Trade Marks Journal advertisement of the mark as well as from the registration certificate the mark was registered in U.K. without the said letters. The device per se was registered, Assistant Registrar of Trade Marks: Decision reserved." Learned counsel for the respondent in her written address submitted that the decision complained of was properly and lawfully taken by the respondent in the proper exercise of his power and discretion under the relevant legislation having taken into consideration all relevant facts and circumstances and that the decision complained of is duly reasoned. In the exercise of his powers, counsel contended, the Registrar correctly found that the mark propounded for registration was not distinctive which was a prerequisite under s.11
(1)(
- e)of the Trade Marks Law, Cap.268. In the decision making process, counsel argued, the Registrar first considered whether the mark could be acceptable for registration either in part 'A' under s.11 or in part 'B' under s.12 and having found that the mark was not registrable under either part of the Register, as it did not satisfy the test of "distinctiveness" required by either of the said sections, he deemed it necessary to consider s.13 as s.13 contains certain specific prohibitions upon registrations; it was her submission that if it is found that a mark is distinctive i.e. to pass the test of s.11 and/or s.12 the Registrar then has to consider s.13 or s.14 to ensure that the provisions of these sections also are not violated. Learned counsel then proceeded to expound on the applicability of sections 11 and 12, in the light of the corresponding provisions of sections 9 and 10 of the English Trade Marks Act of 1938 which are identical to our law and concluded that the Registrar in applying the relevant principles as emanating from our Case Law and the English Case Law, on the facts and evidence before him, correctly found that the device/mark propounded for registration was (
- a)neither inherently adapted to distinguish nor inherently capable of distinguishing; nor (
- b)by reason of its use or in any other circumstances in fact adapted to distinguish nor capable of distinguishing. Counsel further argued that the onus of proof was upon the applicants to adduce the necessary and appropriate evidence in order to establish distinctiveness of their mark under s. 11 which in the circumstances of the case they failed to do. As to the application of the Paris Convention for the Protection of Industrial Property counsel submitted that the extent of its applicability has been considered by our Supreme Court in a number of cases which make extensive reference to its provisions and in particular Plough Inc. v. The Republic
(1985)3 C.L.R.1687, 1691-1692. She submitted on this point that in the present case the ground upon which the Registrar of Trade Marks refused registration of the mark in question, namely, lack of distinctiveness coincides with the provisions of Article 6 quinquies of the Convention and the reservations laid down in paragraph 'B' thereof and there is no conflict in this respect between our law and the Convention. In concluding her written address learned counsel submitted that the Registrar properly directed himself on the law and took the sub judice decision in the proper exercise of his power and discretion under the law having taken into consideration all relevant matters placed before him by the applicants and came to a decision that was reasonably open to him. Learned counsel for applicants in his written address in reply made further clarifications to his legal grounds and submitted that the decisions cited by counsel for respondent as to the International Convention in question do not go into the merits of such Convention and/or can be distinguished. He went further to submit that if no distinction can be made they were wrongly decided for the following reasons: (
- a)If the law to be applied were the provisions of Cap.268 why was the International Convention for the Protection of Industrial Property enacted twice by the House of Representatives of the Republic of Cyprus? (
- b)Since under Article 169.3 of the Constitution Laws Nos. 63/65 and 66/83 are superior laws to the Trade Marks Law, Cap.268, the provisions of Cap.268 must recede before the provisions of the International Convention. (c). In the U.S.A. where similar constitutional provisions place the International Convention above the local laws, decisions of Courts confirm the view that a trade mark registered in the country of origin of the applicant is entitled to protection in the Courts and administrative authorities of the country where an application for registration is made. In this respect he made reference to a decision of the District Court of the Southern District of Florida and submitted that by analogy the applicants are entitled to a trade mark registration of their U.K. registration which is their country of origin. Any other interpretation, counsel submitted, of the International Convention is patently contrary to the obligations undertaken by the Republic under Laws Nos.63/65 and 66/83 and contrary to the interests of the Republic. He made reference in this respect to a decision of the Supreme Court of New York in the case, of Maison Prunier v Prunier's Restaurant and Cafe Inc. etc. [19361 288 N.Y.S. -529, 159 Misc.551. Before embarking on the refusal of the respondent based on sections 11 and 12 of Cap.268 I shall deal briefly with his objection in his original refusal for registration of the trade mark in question based on s. 13 as well. The grounds of his objection were that the mark propounded for registration lacked distinctiveness under s.11
(1)(e) and also that it was objectionable under s.13. In his final decision however, after the hearing, the grounds on which he relied in refusing the registration were solely s.11
(1)(e) and s.12 of Cap.268 and not s.13 to which no reference is made in his decision, obviously having abandoned his original objection based thereon. What is being challenged by the present recourse is the final decision of the Registrar of 22nd March, 1988, in which, as already mentioned. no reference is made to s. 13 and no reliance was placed by him of s.13 in reaching his decision. Therefore, any argument advanced in connection with s.13 though of academic interest, has no relevance to the present case in which its provisions are neither mentioned nor relied upon in the sub judice decision. Therefore, once s.13 is not directly in issue I find it unnecessary to deal with its applicability in the present case. Before proceeding to the merits of the sub judice decision I shall first deal with the contention of counsel for applicants that the respondent failed to consider and give due weight to the Paris Convention for the Protection of Industrial Property, as subsequently revised, which is part of our domestic law by virtue of ratification and, therefore, he failed to carry out a due inquiry. The Paris Convention for the Protection of Industrial Property as revised in Lisbon
(1958)and Stockholm
(1967)was ratified and became part of our domestic legislation by the Convention for the Protection of Industrial Property (Ratification) Laws 63 of 1965 and 66 of 1983. It is clearly provided by our Constitution under Article 169.3 that treaties, conventions arid agreements concluded in accordance with the provisions of paragraphs 1 and 2 of the said Article are as from their publication in the official Gazette of the Republic of superior force to any domestic law on condition that such treaties, conventions and agreements are applied by the other party thereto. The question of reciprocity in this case is not in issue as from what emanates from Kerly's Law on Trade Marks and Trade Names, 11th ed. p.665, n.7, the United Kingdom is a party to the Convention to which reference has been made by learned counsel for the applicant. Extensive reference to the provisions of the Convention and its applicability has been made by this Court in a number of cases, suffices it to refer to E. Merck v. The Republic
(1972)3 CL.R. 548 and Plough Inc. v. The Republic
(1988)3 C.L.R. 145; therefore, I find it unnecessary to go into its provisions in detail. I wish only to state that I adopt what was said by the Full Bench in Plough Inc. (supra) in this respect. I shall only briefly deal with certain provisions in the Convention which are material for the purposes of the present case. Article 6, Quinquies, of the Convention reads as follows: "A.... B. Trade marks under the present Article may not be denied registration or cancelled except in the following cases:
(1)When they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed.
(2)When they have no distinctive character, or consist exclusively of signs or indications which may serve in a trade to designate the kind, quality, quantity, intended purpose, value, place of origin of the goods or time of production, or which have become customary in the current language or in the bona fide and established practices of the trade in the country where a protection is sought.
(3)...." Section 11 of the Trade Marks Law, Cap.268 reads: "11.
(1)In order that a trade mark to be registrable in Part A of the register, it may contain or consist of at least one of the following essential particulars: (a)..... (b)..... (c)..... (d)..... (
- 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), (
- c)and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness." A comparison of Article 6 Quinquies of the Convention with s.11 of the Trade Marks Law and its effect upon such provisions has been made by A. Loizou, J. (as he then was) in the case of E. Merck (supra) at pp.561, 562 as follows: "It appears from a comparison of the aforesaid texts that the requirements under sections 11 and 13 of the Trade. Marks Law to the extent that they have been invoked by the Registrar in arriving at the sub judice decision and which are similar to the corresponding provisions of the Trade Marks Law obtaining in England, are not in conflict with the reservations in Article 6 quinquies paragraph B. of the Convention. As pointed out in Kerly's Law of Trade Marks and Trade Names, 9th Edition, paragraph 964, p. 510 - 'Article 6 quinquies states that every trade mark duly registered in its country of origin shall be admitted for deposit and protected in its original form in the other countries of the Union, subject to certain reservations. These reservations refer to marks which infringe the rights of third parties, marks which have no distinctive character and marks which are contrary to morality or public order.' And then it says: '....the requisites for registration provided under sections 9, 10, 11, and 12 of the Trade Marks Act, 1938, will in nearly all cases coincide with the provisions of article 6 of the Convention.' The conditions for filing a registration of trade marks are left to the domestic law by Article 6.1 of the Convention, and such a law is valid to the extent that it does not offend the provisions of the Convention. In the present case, the grounds upon which are Registrar of Trade Marks refused registration of the trade mark in question, coincide with the provisions of Article 6 quinquies of the Convention and the reservations laid down in paragraph B. thereof. There being no conflict between the law and the Convention in this respect, this ground of law must fail." The above opinion was adopted by the Full Bench in Plough Inc. (supra). In the present case the refusal of the Registrar was based on s.11
(1)(e) in that the mark in question lacked distinctiveness, a matter which brings the case under the exceptions of the application of the Convention under para.B.2 of Article 6, Quinquies, of the Convention. Learned counsel for applicants advanced various reasons in support of his argument that a distinction should be drawn between the present case and the above cases or, in the alternative, find that the said cases were wrongly decided. I find myself unable to accept this contention. The extent of the applicability of the Convention has been expressly pronounced in the aforesaid cases from which I an bound and as a result I find that once the Registrar reached his conclusion, as mentioned above, it was not necessary for him to examine whether the Convention could have any bearing in the case. The question, therefore, which remains for consideration is whether the respondent rightly reached the conclusion that the trade mark in question lacked distinctiveness. The question of distinctiveness under s.11
(1)(e) and registrability of a mark under s.12 as well as the principles underlining them have been considered in a number of cases of this Court in which the English Law on the matter has been reviewed and I need not repeat them. (See, inter alia, E. Merck v. The Republic (supra); Curzon Tobacco Co. Ltd. v. The Republic
(1975)3 C.L.R. 363, and on appeal
(1979)3 C.L.R. 151; Stavrinides Clothing v. The Republic
(1983)3 C.L.R. 98; Peletico Ltd. v. Registrar of Trade Marks
(1986)3 C.L.R. 490; Societe Nationale Elf Aquitaine v. The Registrar of Trade Marks
(1987)3 C.L.R.1420; Blue Bell Inc. v. The Registrar of Trade Marks
(1987)3 C.L.R. 542; American Telephone and Telegraph Company v. The Registrar of Trade Marks
(1987)3 C.L.R. 1966; White Horse Distillers Ltd. v. El Greco Distillers Ltd. and Others
(1987)3 C.L.R. 531; Plough Inc. v. The Republic (supra)). The question of registration of a mark in a foreign country on which counsel for applicant sought to rely and the bearing of such registration 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 have been considered in the cases of Societe Nationale Elf Acquitaine (supra) and American Telephone and Telegraph Company (supra) in which reference is made in this respect to the English Case Law and to Kerly's Law on Trade Marks and Trade Names, 12th ed., where the principle was adopted that foreign registrations are of no consequential significance. The opinion expressed in the said cases was adopted in Plough Inc. (supra) in which reference is made also to the following extract in Kerly's Law on Trade Marks and Trade Names, 12th ed., at p.123, para.8-67 which reads as follows: "Use of registration abroad: On an application to register a mark for use in the United Kingdom, its distinctiveness in the United Kingdom is in question. Thus extent of registration and use of the mark abroad are of secondary significance, if any." Useful reference may be made in this respect to the following extract from the decision in Needle-Tip Trade Mark [1973] R.P.C. 113 at p.118 in which the provisions emanating therefrom were adopted in Plough Inc. (supra): "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 judgment 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." Finally I shall briefly deal with the question as to whether the Registrar paid due cognizance to the question of the use of the trade mark in question in Cyprus. The affidavit of the Secretary of the applicants in which particulars are given of one sale effected in Cyprus in 1982 of a motor-vehicle with the grille in question, was part of the material which the Registrar took into consideration in reaching his decision. As held in Plough Inc. (supra) "though it is a matter which may be taken into consideration by the Registrar in reaching his decision it is not by itself the criterion which may weigh the scales in favour of the registration of the trade mark. However, undue weight cannot be given to such element to overweigh the requirements under s. 11 for distinctiveness of the mark in question." The approach of our Supreme Court as to when the Court should interfere with an administrative decision regarding the registrability of a trade mark as having been reviewed by the Full Bench in Revisional Appeal No.505 White Horse Distillers (supra) and reiterated in the decision of the Full Bench in Plough Inc. (supra) is that the 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 does not interfere with an administrative decision regarding the registrability of a trade mark if such decision was reasonably open to the Registrar of Trade Marks and it does not substitute its own evaluation in the place of that of the Registrar. In the present case on the material before me and having carefully considered the elaborate decision of the respondent Registrar of Trade Marks and the reasons given by him for refusing the registration of the trade mark in question I have come to the conclusion that it was reasonably open to him to decide as he did. Therefore, the recourse fails and is hereby dismissed and the sub judice decision is affirmed. I make no order for costs. Recourse dismissed. No order as to costs. cylaw.org: Από το ΚΙΝOΠ/CyLii για τον Παγκύπριο Δικηγορικό Σύλλογο