(1985)1985 February 4 [A. Loizou, J.] IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION GUESS? INC., OF CALIFORNIA, U.S.A., Applicant, v. THE REPUBLIC OF CYPRUS, THROUGH THE REGISTRAR OF TRADE MARKS, Respondent. (Case No. 9/84). Trade Marks—Registration—Discretion vf the Registrar of Trade Marks—Principleson wliich it slwuld beexercised —And principles on which Court interferes with the exercise of such discretion—Registrar's refusal to register word "GUESS" because it was simihr to trade-mark "CHESS" 5 —Reasonably open to the respondent Registrarto arriveat the conclusion he did on the material before him—Registration of trade-mark in applicant's country of origin—Article 6 quinquies of the ParisConvention for the Protection of Industrial Property—No conflict between the Trade Marks 10 Law, Cap. 268 and the Convention. The applicants, a company of limited liability incorporated under the provisions of the relevant Law in the State of California in the United States of America, were the registered owners of the trade mark "GUESS?" in the 15 U.S.A. under registration No. 1271896 in Class 25 in respect of men's and women's pants and jumpsuits and women's blouses, skirts, shirts, vests, jackets and dresses. On the 23rd April 1983 they applied for the registration of the said mark consisting of the word "GUESS?", written in capital 20 letters with word "Paris" in small capital letters and with a question mark, all enclosed in a triangular frame as a trade mark. This application having been considered for acceptance was on the 2Sth May, 1983, objected to on 326 3 C.LR. Guess v. Republic the ground that the proposed trade-mark was in accordance with the provisions of section 14
(1)of the Trade Marks Law, Cap. 268, similar to the trade mark No. 17025 "CHESS" and device in class 25. 5 10 15 20 25 30 35 40 Upon a recourse by the applicants against the refusal of the'respondents to register the above trade mark: Held, that the Registrar of Trade Marks in exercising his discretion, is not limited to any particular type of consideration; that he must exercise it judicially on reasonable grounds which are capable of being clearly stated; that he has to examine the possible confusions or difficulties which might arise in consequence of the registration of the trade mark or the possible impairment of the rights of other traders to do that which, apart from the registration, might be their ordinary mode of carrying on their business; that this Court will' not interfere with such a discretion if due weight has been given to all material facts, it has not been based on a misconception of law or fact and it was not exercised in excess or abuse of power; that in the present case it was reasonably open to the respondent to arrive at the conclusion he did on the material before him; that on the totality of the circumstances, there are no reasons to interfere with the exercise of the respondent Registrar's descretion; 'and that, accordingly, the recourse must be dismissed. Held, further on the contention of applicants that the registrationof applicants' mark in the applicants' country of origin gives applicantsthe right to apply to have their mark registered in Cyprus pursuant to Article 6 quinquies of the Paris Convention for •the Protection of Industrial Property which by reason of Article 1693 of the Constitution is of superior force to any conflicting provisions of CAP. 268; and that the respondent's failure to enquire as to such country of origin registrationis another instance of a defective exercise of the powers vested in him by such law. That the grounds upon which the respondent Registrar 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 and there is no conflict between the Trade Marks Law. 327 Guess v. Republic
(1985)Cap. 268 and the Convention in this respect; and that, therefore, no question of inquiry arose as to whether the said trade mark was so registered in its country of origin or not, which in any event was a matter which had to be brought to the knowledgeof the Registrar by the applicants. 5 Application dismissed. Cases referred to: Merckv. Republic
(1972)3 C.L.R. 548 at p. 564. Recourse. Recourse against the refusal of the respondent to register 10 applicants' trade mark "GUESS?" A. Dikigoropoullos, for the applicants. St. loannidou (Mrs.), for the respondents. Cur. adv. vult. A. Loizou J. read the following judgment. By the present 15 recourse the applicants seek a declaration of the Court that "the act or decision of the Respondent to refuse to register Applicants* trade mark GUESS? communicated to the applicants in the form of Grounds of Decision by the Registar of Trade Marks, on the 5th January 1984,... is null 20 and void and of no effect whatsoever as being contrary to the provisions of the Trade Marks Law CAP. 268 and/or of the Constitution and/or as having been made or taken in excess and/or in abuse of the powers vested in him." The applicants are a company of limited liability incor- 25 porated under the provisions of the relevant Law in the State of California in the United States of America. They are the registered owners of the trade mark "GUESS?" in the form set out in exhibit 1, attached to the application. The mark in question is registered in the U.S.A. under Re- 30 gistration No. 1271896 in Class 25 in respect of men's and women's pants and jumpsuits and women's blouses, skirts, shirts, vests, jackets and dresses. By an application dated.23rd April 1983, they applied for the registration of the said mark consisting of the!word 35 328 3 C.L.R. Guess v. Republic A. Lolzou J. "GUESS?", written in capital letters with the word "Paris" in small capital letters, and with a question mark, all enclosed in a triangular frame as a trade mark. (Seeexhibit 1). 5 10 15 20 This application having been considered for acceptance was on the 28th May, 1983, objected to on the ground that the proposed trade mark was in accordance with the provisions of section 14
(1)similar to the trade mark No. 17025 "CHESS" and device in class 25. In the said letter (exhibit 2) addressed to the applicants, their attention was drawn to the provisions of regulation 32 of the Trade Marks Regulations, 1951-1971 by virtue of which they could either apply for hearing or send to the Registrar of Trade Marks a considered written reply within two months from the date of the said letter, otherwise they would be considered as having withdrawn their application which would then be struck off the list of pending applications. It was further pointed out to them that any evidence which was to be adduced should be in accordance with the provisions of section 52 of the Trade Marks Law, Cap. 268, otherwise it would not be admitted. The applicants on the 4th October, 1983, filed their considered reply (exhibit 3) through their then advocate which reads as foUows:- 25 30 35 "We refer to your letter of May 28, 1983 and wish to submit the following: 1) While the sound of 'GUESS' to 'CHESS' might be somewhat similar, the meanings of each are so distinct asto preclude any confusion. The word 'chess' meansaccordingtotheWebster'sDictionary (agame of ancient origin for two, played on a chessboard in which each player moves his chessmen according to fixed types of movements for each across the board in such a way as to try to checkmate the Opponent's king'. The word 'GUESS' according to the same dictionary means 'to form a judgment or opinion of without knowledge or often without means of knowledge* etc. 2) the Designs are also dissimilar. The design of the Oiessman' in a trapezoid device is quite dissi329 A. Lolzou J. Guess v. Republic
(1986)milar with the 'question mark' in device. a rectungular Therefore, applying now the principals of comparison as they appear in Chapter 17 of Kerly's Law of Trade Marks, 10th edition, we submit that our clients mark is not confusingly similar with the cited mark and therefore they can co-exist registered side by side without the danger of confusion. 5 However, our clients are prepared to accept a condition to serve notice of the advertisement of the mark 10 to the owners of cited mark. Kindly re-examine the application in the light of the above submissions and let us have your decision at your earliest convenicene." The respondent replied to the applicants by their letter 15 dated 20th October 1983 (exhibit 4) to the effect that their aforesaid objection had been re-examined "carefully in the light of the contents of their application of the 4th October 1983, but unfortunately it could not be withdrawn and by the said letter same was reconfirmed". 20 On the 7th January the present recourse was filed and the grounds of law relied upon in support thereof are the following: " 1 . Respondent's act or decision complained of are based upon a misconception of both the law and the 25 facts of the case in that the Registrar of Trade Marks:(a) Misdirected himself upon the true meaning and effect of Section 14
(1)of CAP 268 and/or was wrong in law and/or in fact in concluding that the applicant's application in respect of the said 30 trade mark failed under the aforesaid statutory provisions. (
- b)He misdirected himself upon the ratio decidendi and/or upon the true meaning of the authorities cited by him. (
- c)He failed to obtain, to ascertain 330 and evaluate 35 3 C.L.R. Guess v. Republic A. Loizou J. correctly all relevant facts and/or based his decision upon irrelevant considerations. 5 (
- d)The considerations upon which his act and/or decision is based is not founded upon principies to be deduced from the Trade Marks Law. 2. The act or decision complained of is wrong in law and/or in fact in that it is not warranted by the evidence before the Registrar of Trade Marks. 10 3. The act and/or decision complained of was made and/or taken contrary to the provisions of the Paris Convention for the Protection of Industrial; Property of 1883 as subsequently revised, and as ratified by the Republic under Laws Nos. 63 of 1965 and No. 66/83 of 1983." 15 After, however, the communication of the decision of the respondent, by his letter dated 20th October, 1983, exihibit 4, which reached the applicants' counsel on. the 24th October 1983, the latter requested the respondent under rule 34 of the Trade Marks Rules, 1951-1971, to state in 20 writing the grounds of his decision and the materials used by him in arriving at the decision. The Registrar complied thereto and the grounds relied upon were communicated to the applicants* counsel on the 4th January, 1984. In the said grounds after giving the history of the matter and 25 quoting the contents of exhibit 3, hereinabove set out the Registrar had this to say: 30 35 "As far as the first point of the advocate's reply, I shall code the case of Warwick Upholstery Co. Ltd's Appns [1958] R.P.C. where it was decided that the name 'Red Shield' would not be allowed because of ..the 'Red Seal'—The words here 'Shield' and 'Seal' have a different meaning but because they sound the same they could not co-exist for the same goods. As regards the second point raised by the advocate that the two devices are different, again I have to disagree as the triangular frame in which the word and questionmark (GUESS?) are enclosed have no trade mark significance and I see nothing which re331 A. Lolzou J. Guess v. Republic
(1986)moves this from the class of common-place outlines or borders. It is common practice among traders when devising trade marks to set off or enclose what appear to be essential features of their marks within borders of 5 different kinds, either in simple geometrical shapes or more elaborate border arrangements. These geometrical outlines are not adapted to distinguish the goods of any particular trader. The device has no trade mark significance and I 10 see nothing in it which removes it from the class of common place outlines or borders. As I have already stated s. 14
(1)requires the consideration of two issues, namely: (
- a)whether the respective specifications cover one or more of the same 15 goods or goods of the same description, and (
- b)whether the respective marks sufficiently resemble each other having regard to what would be normal and fair user of them. I have therefore, first to determine whether goods 20 are of the same or of a different description. It has already been stated that the applicants propose to register the trade mark "GUESS" in class 25 in respectof articles of clothing and since the trade mark 17025 "CHESS" is alsoregistered in class 25 in respect of arti- 25 cles of clothing, I find,that the goods are the same and of the same description. I come now to the second question under s.l4(
- l)to compare the two trade marks. The proposed trade mark of the applicants consists 30 of the word "GUESS' and the cited mark of the word "CHESS". The only difference in the two marks are the first two letters.... :"GU" of the proposed trade mark and.... "CH" of the cited trade mark which make no real difference. The two words remain two, 35 two-syllable words with the same syllables and the same letters. The first letters GU and CH are visually similar 332 3 C.L.R. Guess v. Republic A. Lolzou J. letters and the main idea left on the mind by both may be the same. 5 10 15 20 25 30 In the case of GeneralElectic Co. v. Consolidated Electrodynamics Corp. [1963] R.P.C. 1 at pp. 3, 4, in comparing the marks GEC and CEC. the court said that 'The resemblance could hardly be closer, short of actual identity, and might well confuse anyone not having special knowledge'. A contention that the defendants' goods were of a highly specialised character, such that customers for them would not be confused, failed on the ground that the plaintiffs' goods covered a very wide range and the matter must be considered 'over the whole range of potential customers for goods protected by the plaintiff company's marks'. The manner trade marks are compared, well appears in Chapter 17 of Kerley's Law of Trade Marks, 10th edition. I shall cite a few passages from that Chapter. I quote from page 456 from the summing of Parker, J. in the PianotistCo. Ltd's Appl. [1906] 23 R.P.C. 774 at p. 777. 'You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customers who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.' Same book page 465, paras,17-17(b):- 35 '(
- b)The marks as a whole: common elements. The trade mark is the whole thing—the whole picture on each has to be considered. There may be differences in the parts of each mark, but it is important to consider the mode in which the parts are put together and to judge whether the 333 A. Loizou J. Guess v. Republic 11985} dissimilarity of the part or parts is enough to make the whole dissimilar.' Same book page 466, para 17-19:'Common elements: same dicta In Broadhead's Application, Evershed M.R. 5 followed the observations of Lord Russel in Coca Cola Co. of Canada v. Pepsi Cola Co. of Canada, where he stated; 'Where you get a common denominator, you must in looking at the competing formulae pay much more regard to 10 —the parts of the formulae which are not common—although it does not flow from that that you must treat the words as though the common part was not there at all. Where common marks are included in the trade marks to be compared, or 15 in one of them, the proper course is to look at the marks as wholes, and not to disregard the parts which are common'. Having therefore, carefully considered the mark propounded for registration in the light of the above 20 consideration, I am convinced that it is not entitled for registration under the provisons of s.l4(
- l)of the Law." In arguing the case on behalf of the applicants counsel submitted that the respondent had misdirected himself as 25 to the ratio decidendi of the authorities cited by him. He invoked the test laid down in Kerly's Law of TradeMarks, 11th Ed.
(1983)p. 407, para. 17-07, that in comparing the marks the Registrar of the Courts, as the case may be must, as it appears from the authorities, take into account 30 all the circumstances of the case and must consider whether as a whole the applicants' mark is substantially different from the opponents. He went on to comment on the authorities cited by the respondent Registrar and argued that same do not support the conclusion that the appli- 35 cants' trade mark is not entitle to registration by reason of the provisions of section 14 of the Law. On the contrary, he urged, such authorities and others referred to by him in his address, support the propositions set out in the 334 3 CJL.R. Guess v. Republic A. Loizou J. grounds of law relied upon earlier set out in this judgment. Finally he argued that the registration of applicants' mark in the applicants' country of origin gives applicants the right to apply to have their mark registered in Cyprus pursuant 5 to Article 6 quinquies of the aforesaid International Convention which, by reason of Article 169.3 of the Constitution is of superior force to any conflicting provisions of CAP.
- The respondents failure to enquire as to such country of origin registration is another instance of a de10 fective exercise of the powers vested in him toy such law. Dealing with the last argument first, I need only say that the fact that the trade mark in question, being registered in its country of origin brings the case within Article 6, quinquies of the Convention for the Protection of 15 Industrial Property ratified by Ratification Law No. 63 of
- By virtue of this article every trade mark duly registered in its country of origin is admitted for deposit and protected in its original form in the other countries of the Union subject to certain reservations. These reservations 20 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. I had the occasion of dealing with this aspect of our Trade Marks Law in the case of Merck v. The Republic 25 <1972) 3 C.L.R. p.548 .and I need not repeat them here. In the present case the grounds upon which the respondent Registrar refused registration of the trade mark in question concide with the provisions of Article 6 quinquies of the Convention and the reservations laid down in para30 graph (b) thereof and there is no conflict between the Trade Marks Law, Cap. 268 and the Convention in this respect. Therefore no question of inquiry arose as to whether the said trade mark was so registered in its country of origin or not, which in any event was a matter which had 35 to be brought to the knowledge of the Registrar by the applicants. As regards the rest of the grounds the answer is to be found in what I said in the Merck case (supra) at p. 564; "To my mind, the Registrar in exercising his discre335 A. Lolzou J. Guess v. Republic
(1985)tion, is not limited to any particular type of consideration. He must exercise it judicially on reasonable grounds which are capable of being clearly stated. He has to examine the possible confusions or difficulties which might arise in consequence of the registration of the trade mark or the possible impairment of the rights of other traders to do that which, apart from the registration, might be their ordinary mode of carrying on their business. 5 The point, therefore, that arises for consideration 10 is the extent to which this Court will interfere with the exercise of administrative discretion. This matter has been the subject of judicial pronouncement in a number of cases. (See, inter alia, Jacovos Jacovides v. The Republic
(1966)3 C.L.R. page 212, Impalex 15 Agencies Ltd. v. The Republic
(1970)3 C.L.R. 361, and Psaras v. The Ministry of Commerce and Industry
(1971)3 -C.L.R. 151). This Court will not interfere with such a discretion if due weight has been given to all material facts, it has not been based on a miscon- 20 ception of law or fact and it was not exercised in excess or abuse of power. In the present case I have come to the conclusion that it was reasonably open to the Registrar to arrive at the conclusion that he did on the material before him. This Court will not 25 substitute its discretion for that of the Registrar, the appropriate authority under the Law in this case, since he exercised same judicially and neither in abuse or excess of power, nor contrary to law." Guided by the aforesaid principles and adopting them 30 for the purpose of determining the issues raised in the present recourse, I have come to the conclusion that on the totality of the circumstances, there are no reasons to interfere with the exercise of the respondent Registrar's discretion and consequently the present recourse should be and 35 is hereby dismissed with no order as to costs. Recourse dismissed with no order as to costs. 336