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(1983)1983 February 12 [A. Loizou, J.] P.M. & G. STAVRtNIDES CLOTHING INDUSTRIES LTD., Applicants, THE REPUBLIC OF CYPRUS, THROUGH THE OFFICIAL RECEIVER AND REGISTRAR, IN HIS CAPACITY AS REGISTRAR OF TRADE MARKS, Respondents. (Cases Nos. 175/81, 176/81 and 177/81). Trademarks—Registration—Application to registerthe marks "JESUS", -FERRARI" and "YOUNGSTER" in Part "A" Class 25, of the Register—-Geographical name, surname, and mark having immediate relationwith the characteror quality of the goodsand devoidof anydistinctive characteristic, respectively— Principles governing registration—Restriction of registration ofsurnames extendstoforeign aswellasCypriot names—Sections 11
(1)00 ™d (
  1. e)and 13 of the Trade Marks Law, Cap.268. The applicant company applied to the respondent Registrar to have the marks "JESUS" and "FERRARI" registered in Part "A", Class 25 of the Register, in respect of dresses, shirts, trousers, ties, including shoes and slippers. It also, applied to have the mark "YOUNGSTER" registered in the same Part and Class of the Register in respect of shirts and ties. The respondent Registrar refused the above applications on the ground that mark "JESUS" was a geographical name and that it wascontrary to section 13of the Trade Marks Law,Cap. 268 because the said mark could cause confusion as regards theorigin ofthegoods. Theregistration ofthemark "FERRARI" was refused on the ground that it was a surname and that it was contrary to section 13of the law because it could cause confusion as regards the origin of the goods. Registration of themark "YOUNGSTER" wasrefused inviewoftheprovisions of paras, (
  2. d)and (
  3. e)of section 11
(1)of the Law on the ground 98 Stavriitides Clothing v. Republic 3 CX.R. that (
  1. a)it had immediate relation with the character or the quality of the goods and (
  2. b)was devoid of any distinctive characteristic. Upon a recourse by the applicants: 5 10 15 20 25 30 35 Held,
(1)that the mark "JESUS" being a geographical name, the purchasing public will be caused to wonder as to the origin of the goods concerned and this will cause confusion or deception within the meaning ojf section 13 of the Law; that the recourse against the refusal;1 to register the mark "JESUS" should fail as the respondent properly directed himself on the law and lawfully took the subject decision in the proper exercise of his powers and discretion tinder the Law and the Rules made thereunder, having duly taken into consideration all relevant matters placed before him on behalf of the applicant Company and in the light of the absence of any evidence of distinctiveness or user having been adduced.
(2)That the restriction on the registration of surnames extends to foreign as well as Cypriot names, and the fact that such surname isnot an indigenous one cannot have the effect claimed on behalf of the applicant; that no evidence of distinctiveness has been adduced to bring this case within the provisions of section ll(l)(e) of the Law and that section 13 is equally applicable; accordingly the recourse against the refusal to register the mark "FERRARI" should fail.
(3)That the mark "YOUNGSTER" propounded for registration has a direct reference to the character or quality of the goods and that its registration is prohibited by the provisions of section Il(l)(d) of the Law and that no evidence of distinctiveness has been produced at the hearing before the respondent to bringthe case of the applicant Company within the provisions of section ll(l)(e); that, moreover, objection could be taken under section 13 of the Law; accordingly the recourse against the refusal to register the mark "YOUNGSTER" should, also, fail. Applications dismissed. Cases referred to: MADAME. [1966] R.P.C. 541 at p. 545. 99 r Stavrinides Clothing v. Republic
(1983)Recourses. Recourses against the decision of the respondent whereby he refused the registration under the Trade Marks Law, Cap. 268 of three trade marks "Jesus", "Ferrari" and "Youngster" tothe applicants. X. Xenopoulos, for the applicants. 5. Georghiades, Senior Counsel of the Republic, for the respondents. Cur.adv.vult. A. Loizou J. read the following judgment. By these three JQ recourses which, because of their nature, have been heard together, the applicant Company challenges thedecisions of the respondent, Registrar of Trade Marks by which he refused the registration under the Trade Marks Law, Cap. 268 (hereinafter to be called the "law"), of three trade marks "JESUS", "FE- ! 5 RRARI", and "YOUNGSTER", on the grounds set out in his respective decisions which werecommunicated to the applicant Company and to which reference will be shortly made. The applicant Company applied to have the mark "JESUS", registered in Part "A", Class 25, of the Register, in respect of 20 dresses, shirts, trousers, ties, including shoes and slippers. The respondentbyhisletterdated the27thDecember, 1980,informed the applicant Company that on the basis of paras, (d) and (e) of section 11
(1)of the Law, same could not be accepted as the proposed mark was a geographical name and devoid of any 25 distinctivecharacter and alsoastherewasobjection onthebasis of theprovisions of section 13of the Law which provides that: "It shall not be lawful to register as a trade mark or part ofa trade mark any matter theuseof which would, byreason of its being likely to deceive or cause confusion or 30 otherwise, bedisentitled to protection in a court ofjustice, or would becontrary to law ormorality, or any scandalous design". Bythesameletter the attention ofthe applicant wasdrawn to regulation 32oftheTradeMarksRegulations, 1951 inaccordan- 35 cewith which they could either ask for a hearing or send to the respondent a written reply within two months from the date of thesaidletter. Theapplicant Company askedfor ahearingand a date wasgiven by the respondent pointing out, inter alia, that 100 5 3 C.L.R. Stavrinides Clothing v. Republic Λ. Loizou J. any evidence to be adduced at thehearing should be inaccordan­ ce with the provisions of section 52 of the Law, otherwise it would not be accepted. In compliance thereto, an affidavit was filed claiming that the applicant Company was entitled to 5 the registration of the said mark for two reasons:(
  1. a)That the mark is not a geographical name and that it is not devoid of any distinctive characteristic, and iO (
  2. b)That as regards the objection on the basis of section 13, the said mark in no way could create any confusion and that this provision had no application to the case. After counsel for the applicant Company was heard, the respondent informed the applicant of his decision by letter dated the 30th March, 1981, (see exhibit 2), which reads as follows: 15 20 **I wish to refer to the hearing dated 6th March, 1981, with regard to the aforesaid mark and inform you that your application has been re-examined on the basis of what was stated at the said hearing, including also the affidavit dated 28.2.1981 and it has not been possible to accept same as: (
  3. a)The aforesaid mark is a geographical name and it appears in the dictionary "Lippincott's Gazetteer" as follows: 25 30 Jesus: town (Dist. pop. 16,777) Paraguay. " village (Pop. 1,763) Balearic Isls. Resort (Pop. 19) Peru. Island (Pop. 21,631). Jesus Maria: 4 towns (Pop. 46,840), etc. (
  4. b)Is contrary to section 13 because the said mark can cause confusion as regards the origin of the goods. Hence my objection which is contained in my letter dated 27th December, 1980, continues to exist and by the present letter same is confirmed". 35 With regard to the mark "FERRARI",the application again was to register same in Part "A" of the Register, Class 25, again in respect of the same goods as with the first mark. 101 Λ. Loizou J. Stavrlnides Clothing v. Republic
(1983)By letter dated the 27th December, 1980, the applicant was informed that same could not be so registered because on the basis of the provisions of para, (d) of section 11
(1)of the law, the proposed mark is a geographical name and surname and there was also objection under section 13 of the law. 5 The procedure of hearing was gone through, and an affidavit was filed on behalf of the applicant Company claiming therein that they are entitled to its registration for two reasons: (
  1. a)That itispossible tobeused asa surnameoritispossible tobea geographical name but this does not affect its distinctive chara- 10 cteristic and it is not possible to exclude its registration, and (
  2. b)Regarding the objection on the basis of section 13 that it could not create any confusion and that same had no appli­ cation to the case. The decision of the respondent was communicated to the 15 applicant Company by letter dated the 30th March, 1981, (see exhibit 3) who were informed that their application had been re-examined and that it did not become possible to accept same as: "(
  3. a)Thesaid mark is a surnameandappears inthefollowing 20 telephone directories: RomaDir. — Ferrari — about 800 times London Dir. — " — " 7 0 Paris Dir. — " — " 75 " (
  4. b)Is contrary to section 13 as the said mark can cause 25 confusion as regards the origin of the goods. Consequently my objection which is referred to in my letter dated 27th December 1980,continues to exist and is confirmed by this letter.*' The third mark "YOUNGSTER" was also sought to be 30 registered in part "A" of the register,in Class 25, in respect of shirts and ties. The respondent by his letter dated the 27th December, 1980,refused itsregistrationin viewof theprovisions of paras,(
  5. d)and (
  6. e)of section 11
(1)of the Law, on the ground that (
  1. a)it had immediate relation with the character or the 35 quality of the goods, and (
  2. b)Isdevoid of any distinctivechara­ cteristic. Moreover, as there were objections on the basis of 102 3 C.L.R. Stavrlnides Clothing v. Republic A. Loizcu J. section 13of the Law anda notewas nade theretothat thesaid mark indicates that thegoods will be intendedfor young people (ll(l)(d)), if not, then it is deceptive (section 13). The same procedure for a hearing was gone through, an 5 affidavit was filed onbehalf of theapplicant Company inwhich it is claimed that they were entitled to the registration of the said mark on two grounds: 10 15 (
  3. a)The mark has no relation with the character or the quality of the goods, nor is devoid of distinctive characteristic and nowhere from its contents as well as its construction and meaning it can be inferred that the mark indicates that the goods are intended for young people (ll(lXe)) and innowhere themark is in any way deceptive, and (
  4. b)With regard to the objection on the basis of section 13 it was claimed that it could not create confusion and that this section has no application to this case. The decision of the respondent was communicated by letter dated21.3.1981 (seeexhibit 4),totheapplicantCompanywhere20 by they are informed that the application was re-examined and that the objections contained in the letter of the 27.12.1980 continued to exist and the application was therefore, dismissed. As against the aforesaid decisions, these three recourses have been filed. In Recourse No. 175/81 the argument advanced 25 on behalf of the applicant Company was that the geographical names referred to by the respondent were very remote and in any case not connected with Cyprus at all. Section 11 of the law, in so far as relevant, reads as follows: 30 "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. a)35 ___ . __ (
  2. d)a word or words having no direct reference to the character orquality ofthegoods,andnotbeingaccord­ ing to its ordinary signification a geographical name or a surname; (
  3. e)any other distinctive mark, but a name, signature, or ι A. Loizou J. Stavrinides Clothing v. Republic
(1983)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". In Kerly's Law of Trade Marks and Trade Names, 10th Ed., para. 8-33, page 116, it is pointed out that "when the Act of 1883 allowed the registration of fancy words not in common use, an objection to a word on the ground of its being geographical was, in many cases, upheld. As will be seen from what 10 is said below, many words, especially coined words, that on their face are eminently suitable for use as trade marks, are excluded from section 9(l)(
  1. d)as geographical names. It does not follow that they are totally unregistrable: they may or may not be registrable on proof that they are distinctive in fact: 15 see below the discussion of section 9(I)(e). Thus, the important question under this head isless often 'Is this mark a geographical name?' than 'How strong must the evidence of distinctiveness be, to render this mark registrable?'". Likewise in Halsbury's Laws of England, 3rd Ed., Vol. 38, 20 para. 867, the following is said:ii Geographical names - The words not being 'according to its ordinary signification a geographical name' in the fourth essential particular are not to be given such a wide interpretation that a word becomes a geographical name 25 simply because some place upon the earth's surface has been called by it". A word, however, is not debarred from registration under section 9(l)(
  2. e)as a distinctive word merely because it is geographical and so cannot be registered under section 9(l)(d). 30 As pointed out in Kerly's (supra), para. 8-51, p. 129:" Some geographical names can be inherently adapted to distinguish the goods of particular traders: but only if it can be predicted that they are such names as it would never occur to any other trader in such goods to use. 35 At the other extreme, the name of a major industrial area or city will be totally unregistrable in respect of almost any goods. In between come the marks calling for more 104 5 3 C.L.R; 5 Stavrlnides Clothing v. Republic A. Loizou J. or less evidence that they are distinctive in fact: see the illustrations below. It may tip the balance that the applicant can show that he has a natural or legal monopoly of the production of the goods concerned in the place concerned: but that alone will not make a geographical name registrable without substantial evidence of distinctiveness". In the light of the above statement of the law, which 1 fully adopt, it was pointed out on behalf of the respondent that the 10 mark "JESUS" could be registered under the provisions of section U(l)(
  3. e)of the law as a distinctive mark, but the applicants failed to submit evidence of distinctiveness to bring their case within the said provision. On these grounds alone and without reference to section 13 15 of the law at length, except to say that being a geographical name, the purchasing publicwillbe caused to wonder as to the origin of the goods concerned and this will cause confusion or deception within the meaning of the said section, this recourse should fail as the respondent properly directed himself on the 20 lawandlawfully took thesubjectdecision intheproperexercise ofhispowers and discretionunderthe Lawand the Rulesmade thereunder, having duly taken into consideration all relevant mattersplaced before him on behalf of the applicant Company andin thelight ofthe absence ofanyevidence of distinctiveness 25 or user having been adduced. With regard to the mark "FERRARI", the subject of Recourse 176/81, the same applies in respect thereof that hasjust been said about geographical names. As to the question of beinga surname,itwasargued on behalf oftheapplicant Com30 pany that it is a very rare name and non-existing in Cyprus at all as such. The restriction regarding registration of surnames is contained in section ll(l)(
  4. d)hereinabove set out and in Kerly's (supra) at para. 8-37, p. 120, it is stated: 35 " The restriction extends to foreign as well as English surnames. It seems now established that any application 'for the admittance of a surname to registration ought to bemost 105 A. Loizotl J. Slavrimdes Clothing v. Republic
(1983)closely scrutinised and acceptance of it obtained only where its distinctive character is quite clearly- proved'. Very common surnames are registrable, if at all, only upon overwhelming proof that in fact they are distinctive: see the discussion, on proving distinctiveness of surnmaes 5 below, in connection with section 9(l)(e). The Registrar's practice is to require some evidence of distinctiveness for any word which isasurname at all, unless it isboth avery rare surnameand alsoisanordinary Englishword, withan overwhelmingly commoner and better-known meaning 10 otherwise than as a surname. Since, however, spelling is important in distinguishing surnames from each other, there is little room for objecting to a mark on the ground that it is a misspelt surname." An approach regarding distinctiveness and their possibility 15 of registration as such is to be found in Kerly's(supra), para. 8-52, p.130, where it is stated: "Surnames (and, a fortiori, completepersonal names)may undoubtedly be registered, upon sufficient proof of distinctiveness. But suchregistrationsshouldnot begranted 20 lightly: the tribunal must consider not merely any other persons of the same surname who may at the time be engaged inrelated trades,butalsoanywhomaywishtodoso in the future". Further elaboration of the subject is to be found in para. 25 8-53 of Kerly's(supra) but for the purposes of thisjudgment a further reference to it is unnecessary. No doubt the restriction on the registration of surnames extends to foreign as well as Cypriot names, and the fact that such surname is not an indigenous one cannot have the effect claimed on behalf of the 30 applicant. Moreover, as in the other case, no evidence of distinctiveness has been adduced to bring this case within the provisions of section ll(l)(
  1. e)of the law. Section 13isequally applicable for the same reasons as in the previous case. On these grounds this recourse should also fail. With regard to the mark "YOUNGSTER", the subject of Recourse 177/81, it has been argued on behalf of the applicant Company that according to the Oxford Concise Dictionary, the 106 35 3 C.I..R. Stavrlnides Clothing v. Republic A. Loizou J. word "youngster" is a noun and it means a child, active or lively boy arid it has been,submitted that the objection that the mark has direct reference with the nature or character of the goods cannot stand as it will cover shirts and ties which, of 5 course, have no relation with the word "child". The answer to this submission advanced on behalf of the respondent is that the word "YOUNGSTER" is in general a word which should be left open for traders to use free not only in describing their goods but in framing publicity of a mors general nature in 10 connection with their goods and that they should not be embar• rassed in such use by having to exercise caution lest they use the word in a way which could be taken as being used as a trade .mark or as indicating a connection in the course of trade. Re­ ference inthat respect has been madetothecase οΐ "Μ iDAME" 15 [1966] R.P.C. 541, at p. 545. If, on the other hand, the con­ tention of the applicant Company that this trade .nark will cover shirts and ties is accepted, then the mark is contrary to section 13 of the law as being deceptive as to the character or quality of the goods. Support can be found in Kerly's (supra), 20 para. 10-31, where it is stated: 25 "A mark may be disentitled to protection, as being de­ ceptive as to the quality of goods on which it is used. Inparticular, a mark which would be objectionable on parti­ cular goods, as being directly descriptive, is likely to be deceptive for somewhat different goods, which do not have the quality described". It is the case for the respondent that the mark propounded for registration has a direct reference to the character or quality of the goods and that its registration is prohibited by the pro30 visions of section ll(l)(
  2. d)of the Law and that no evidence of distinctiveness has been produced at the hearing before the respondent to bring the case of the applicant Company within the provisions of section ll(l)(e). Moreover objection could be taken under section 13 of the Law. 35 For all these reasons this recourse should also fail. On the material before me, I have come to the conclusion that the decisions of the respondent Registrar were reasonably open to him,,they were arrived at by proper exercise of his power and discretion under the Law and the rules made there107 A. Loizou J. Stavrinides Clothing v. Republic
(1983)under and after having taken into consideration allrelevant matters and therefore all recourses are dismissed but in the circumstances I make no order as to costs. Recourses dismissed. No order as to costs. 5 108

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