clr/1985/1985_3_207.pdf

(1985)mattresses. Business co-operation "between them ended in 1972; and upon an application to the Registrar of Com­ panies the name of the company Ν.N. Christofides Ltd. was changed to "Granada" (Manufacturers of Furniture and Mattresses) Ltd., the present name of the applicants; 5 they kept manufacturing and trading in the same pro­ ducts. that is, furniture and bedding. On their application "Silentnight" was registered as their trade mark on 5th March, 1973. On the 5th March, 1980 the interested parties applied for the rectification of the register by the 10 expungement of the above trade mark registered in the name of the applicants as one registered without suffi­ cient cause. The Registrar decided that "Silentnight"• had been entered in the register without sufficient cause and as such was liable to be erased and ordered it expunge- 15 ment. In arriving at his decision he dismissed the sugges­ tion that the interested parties failed to qualify as "aggriev­ ed persons" in the sense of section 33 and upheld the submission of the interested parties that the registration of "Silentnight" in the name of the applicants was likely 20 to cause confusion. Upon a recourse by the applicants against the above decision the following issues arose for consideration: (a) the legitimacy of the interest of the interested parties in the amendment of the Register, (b) the validity 25 of allegations of abandonment of the use of "Silentnight" by the interested parties in Cyprus, and fc) the likeli­ hood of deception or confusion arising from the use of "Silentnight" by the applicants. Held,

(1)that the expression "agrieved person" in section 30 33 of the Trade Marks Law, Cap. 268 has been liberally construed in a manner embracing every party with a genuine grievance pertaining to the registration of a mark; that the grievance must be substantial in the sense that it must be associated 35 with a definable interest of the party applying for rectification; that a sentimental objection to the use of a word will not suffice; that the interested par­ ties traded in similar products as the applicants and had used "Silentnight" as a description of their 40 products since 1956; that, moreover, they had some 208 Grenade v. Republic association with Cyprus arising from their co-operation with N.N. Christofides Ltd., they might wish to renew at a future date; and that, therefore, on proper evaluation of the facts of the case, particularly the nature and extent of the interest of the interested parties in the use of "Silentnight", it was, at the least, open to the Registrar, if indeed not unavoidable, to find they were aggrieved persons.

(2)That contrary to the submission of applicants no action of the interested parties could be construed as an act of abandonment of "Silentnight".

(3)That with regard to the decision of the Registrar that the trade mark was likely to cause confusion or deception the test is whether the decision was reasonably open to the respondent and the answer depends on proper application of the provisions of section 13 of the Trade Marks Law, Cap. 268 to the facts of the case, especially whether the Registrar could properly discern a likelihood of confusion of the products of the applicants for those of the interested parties; that where the similarity is soundwise striking, the response of the Judge himself on hearing the two sounds may be sufficient for finding a likelihood of deception or confusion; that the possibility of confusion must be real and tangible; that it is a matter of fact and degree whether confusion is a likelihood; that in this case it is difficult for anyone to argue that the use of an identical description by the applicants with that used by the interested parties as a description of their products would not be apt to cause confusion as to the source of the products, especially products of the same nature; that the likelihood of members of the public confusing the products of the applicants for those of the interested parties was, as a matter of fact, real and substantial; accordingly the recourse must fafl. Application dismissed, 209 Grenada v. Republic

(1986)Cases referred to: Curzon Tobacco v. Republic

(1979)3 C.L.R. 151; Merck v. Republic

(1972)3 C.L.R. 548; Ralph's T.M. [1883] 25 Ch. D. 194; Rose v. Evans [1879] 48 L.J. Ch. 618; 5 Talbot's T.M. [1894] 11 R.P.C. 77; 63 L.J. Ch. 264; Bali Trade Mark [1969] R.P.C.

1. Recourse. Recourse against the decision of the respondents whereby the register of trade marks was rectified by the ex- 10 pungement of trade mark "Silentnight". Ph. Valiantis, for the applicants. St. loannidou (Mrs.), for the respondents. G. Platritts, for the interested party. Cur. adv. vttlt. Pnas J. read the following judgment. The recourse is directed against a decision of the Assistant Receiver and Registrar of Trade Marks directing the rectification of the register of trade marks by the expungement of trade mark "Silentnighf(i) at the instance of the interested parties, 20 Silentnight Ltd., an English company. The' applicants, manufacturers of furniture and bedding oppose the rectification and seek its cancellation. The Registrar, they argued, had no valid cause to amend the register by deleting the aforementioned trade mark standing registered in 25 , their name since
2. Undoubtedly the decision of the Registrar is on principle and authority

(2)subject to judicial review under Article 146.1, like any other executory administrative act. Provided the law and the facts are properly conceived 30 (D No. 14813.

(2)E. Merck v. The Republic & Another

(1972)3 C.L.R. 548. 210 15 3 C.L.R. Grenade v. Republic Ptkls J. by the Arministration, the test of legality of his action is whether the decision taken was one reasonably open to the authority. Section 33 of the Trade Marks Law (i) confers wide discretionary powers upon the Registrar on 5 application by an aggrieved person to rectify the register for good cause, including power to direct the expunge­ ment from the register of a trade mark registered with­ out sufficient cause. The breadth of - his powers was acknowledged by the Full Bench of the Supreme Court 10 in Curzon Tobacco v. The Republic

(1979)3 C.L.R.

1. In the judgment of the Court it is explained by A. Loizou, J., that the Court reviewing the action of the Registrar will be disinclined to interfere if due consideration was given to material facts and the result is not fraught with 15 misconception of either the law or the facts of the case. It is beneficial before reviewing the decision to recite the salient aspects of the factual background of the case in order to be able to inquire into the matters before us with proper hindsight of the substratum of the case. .20 The interested parties are manufacturers and traders of furniture. and bedding. They trade in the United King­ dom and other countries under trade mark "Silentnight" first adopted in 1956, since, consistently used as their brand name. In 1969 they entered into a trade associa25 tion with a Cyprus company, namely, Ν. N. Christofides Ltd., authorizing the latter to use "Silentnight" as des- • cription for their manufactured products, furniture and mattresses. Not only they licensed the aforesaid Company to use "Silentnight" but became shareholders of the com30 pany and nominated three of its directors. Business coope­ ration between them ended in
2. Directors nominated by the interested parties resigned, while the interested parties sold their shares to Mr. Renos Christodoulides, of Nicosia, who acquired, it seems, a substantial interest in 35 the company. On application to the Registrar of Com­ panies the name of the company Ν. N. Christofides Ltd. was changed to "Granada" (Manufacturers of Furniture and Mattresses) Ltd., the present name of the applicants; they kept manufacturing and trading in the same pro( i ) Cap. 268 211 PIkIs J. Grenade v. Republic

(1986)ducts, that is, furniture and bedding. On their application "Silentnight" was registered as their trade mark on 5th March,

1. The interested parties applied for the rectification of the register on 5th March,
2. They sought the expunge- 5 ment of the trade mark registered in the name of the applicants as one registered without sufficient cause. The applicants opposed the rectification of the register main­ taining it had been registered for good cause. The Re­ gistrar, after duly heeding the opposing views and taking 10 stock of the factual background elicited in affidavits filed on behalf of the parties, decided "Silentnight" had been entered in the register without sufficient cause and as such was liable to be erased and ordered its expungement. In arriving at his decision he dismissed the suggestion 15 that interested parties failed to qualify as "aggrieved per­ sons" in the sense of section 33 and upheld the submission of interested parties that the registration of "Silentnight" in the name of the applicants was likely to cause con­ fusion

(1). 20 Arguing their case before me, applicants raised similar arguments to those advanced before the Registrar, notably that the interested parties were not persons aggrieved in the sense of the law or entitled to the protection of the Court. The facts, they submitted, justified the inference 25 that applicants abandoned their rights over "Silentnight" after the cessation of their business cooperation with Ν. N. Christofides and the lack of any response from their part to the registration of the trade mark in the name of the applicants in 1973 despite the lapse of a long interval of 30 time since. Emphasis was laid on the amendment of the Trade Marks Law effected by Law 63/62 repealing, inter alia, the proviso to section ll(l)(e) that provided that trade marks registered in Part Ά ' of the United Kingdom Register of Trade Marks constituted prima facie evidence 35 of distinctiveness of the mark. Respondents counter-argued the amendment is irrelevant to the present case as we are not concerned with the distinctiveness of "Silentnight" that was found distinctive enough to justify registration

(1)Section 13, Cap. 268. 212 3 C.L.R. 5 Granada v. Republic Pikts J. in both the U.K. and Cyprus. Certainly it did not qualify the meaning of "aggrieved person" in section 33

(1)of Cap. 268 cr limit its application to citizens or residents of this country. Section 33

(1)does not in terms or by necessary implication limit the range of aggrieved persons to non-foreigners, while in Kerly 0) it is acknowledged on the interpretation of comparable English legal provi­ sions that a foreigner does, in appropriate circumstances, qualify as an aggrieved person. 10 Three are the main issues to be resolved: (

1. a)the legiti­ macy of the interest of the interested parties in the amendment of the Register, (
2. b)the validity of allegations of abandonment of the use of "Silentnight" by interested parties in Cyprus, and (
3. c)the likelihood of deception or 15 confusion arising from the use of "Silentnight" by the applicants. The Registrar focused attention on each of the above issues and decided them in favour of the inte­ rested parties. In his well considered ruling he made lengthy reference to the interest that a party must possess 20 in order to move for the rectification of the register, a subject discussed at length in Kerly by reference to decided cases

(2). The expression "aggrieved person" in the con­ text under consideration has been liberally construed in a manner embracing every party with a genuine grievance 25 pertaining to the registration of a mark. The grievance must be substantial in the sense that it must be associated with a definable interest of the party applying for rectifica­ tion; a sentimental objection to the use of a word will not suffice. A trader, it has been held

(3), who uses a 30 certain name as description for his goods without wishing to register it as a mark, qualifies as an aggrieved person. Nor is it necessary that the person applying for the amend­ ment of the register should actually trade in the particular goods. It is sufficient if there is a possibility that he may 35 wish to extend his business to those goods. (i) Kerly's Law of Trade Marks and Trade Names. 8th Ed... p. 182. <2> Kerly, 10th Ed., p. 203, et seq. TO See Kerly's, 10th Ed., p. 205, and Ralph's T M . [1883] 25 Ch. D 194 UHomewasher»); Rose v. Evans 11879] 48 L J . Ch. 618 («Limetta»; Powell's T.M. (supra) paras. 11-02; Talbot's T.M. [ 1 8 9 4 ] 11 R Ρ £ . 77: 63 L J . Ch. 264 (tEmolliolorumi). 213 Piklt J. Granada v. Republic

(1985)On proper evaluation of the facts of the case, parti­ cularly the nature and extent of the interest of the in­ terested parties in the use of "Silentnight", it was, at th^ least, open to the Registrar, if indeed not unavoidable, to find they were aggrieved persons. They traded in similar 5 products as the applicants and had used "Silentnight" as a description of their products since 1956. Moreover, they had some association with Cyprus arising from their co­ operation with Ν. N. Christofides Ltd. they might wish to renew at a future date. Contrary to the submission of 10 applicants no action of the interested parties could be construed as an act of abandonment of "Silentnight". For much the same reasons as those given by the Registrar, I dismiss the submission that interested parties did not qualify as aggrieved persons. They had a right to apply 15 for the rectification of the register; what remains to decide is whether "Silentnight" was rightly expunged from the register. As earlier indicated, the test is whether the deci­ sion was reasonably open to the respondent. The answer depends on proper application of the provisions of section 20 13 of the Trade Marks Law to the facts of the case, especially whether the Registrar could properly discern a likelihood of confusion of the products of the applicants for those of the interested parties. In the "Bali" Trade Mark [1969] R.P.C. 472 (H.L.), it was indicated that 25 where the similarity is soundwise striking, the response of the Judge himself on hearing the two sounds may be sufficient for finding a likelihood of deception or confu­ sion. In the words of Lord Upjohn quoted in the decision of the Registrar, it is sufficient for finding a likelihood of 30 confusion "....if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source". Later on he remarks that the possibility of confusion must be real and tangible. It 35 is a matter of fact and degree whether confusion is a likelihood. In this case it is difficult for anyone to argue that the use of an identical description by the applicants with that used by the interested parties is a description of their products would not be apt to cause confusion as to 40 the source of the products, especially products of the same nature. The likelihood of members of the public 214 3 C.L.R. Granada v. Republic Pikls J. confusing the products of the applicants for those of the interested parties was, as a matter of fact, real and substantial. 5 In the result the application is dismissed. be no order as to costs. Let there Recourse dismissed. No order as to costs. 21S