(1986)1986 November 29 [PlKis. J.] IN THE MATTER OF ARTICLE 14* OF THE CONSTITUTION ARCADIAN CORPORATION INC.. OF NEW YORK STATE (No. 1). Applicants, v, THEREPUBLICOFCYPRUS,THROUGH THEREGISTRAROFTRADEMARKS, Respondent. (Case No. J042/85). Trade Marks—The Convention for the Protection of Industrial Property (ratified by Law 66/83)—Registration of mark in country of applicant—Convention does not render itregi strable in Cyprus—Registration remainssubject to domestic law. Trade Marks—Registrability—Distinctiveness—The hallmark of registrability—Letter of AIphabet—Lacks distinctiveness— Exception in case of distinctivenessgained by long useand widespread trading—Desertptiveness —NZN—Ν in white standing for nitrogen and ZN in black standing for zing 10 in respect of fertilizer—Descriptive of quality of goods— Moreover,apt to cause confusionas goods do not conrain exclusively said two substances. Applicant's application for the registration of NZN— the first letter in white and the second two in black co- 15 lour—for fertilizers was turned down by the respondent Re gistrar for lack of distinctiveness, tendency to describe components of the fertilizers and likelihood of confusion. Hence the present recourse. It must be noted that letters " N " and "ZN" symbolize nitrogen and zing res- 20 2160 5 3 C.L.R. Arcadian Corporation Inc. (No. 1) v. The Republic 5 spectively. In support of applicant's case their counsel referred to the regislration of the mark in U.S.A. and other countries and the rights flowing from the Convention for the Protection of Industrial Property ratified by Law 66/83*. 10 Held, dismissing the recourse:
(1)The Convention does not make the mark registrable in Cyprus on account of registration in U.S.A., the country of incorporation of the applicants. Registration remains subject to domestic law. largely dependent on consideration of distinctiveness. 15 20
(2)Distinctiveness is the hall-mark of registrability. No one has the right to monopolize the use of letters in the alphabet, common property of mankind. Exceptionally this may be allowed upon proof of distinctiveness gained by the use of the letters over a long period and widespread trading, but this is not the case here. Nor does the representation in this case amount to a visually disstinctive device.
(3)The mark in question purports to describe the character and quality of the goods, that do contain nitrogen and zing. Descriptiveness is, therefore, a further obstacle to its registration.
(4)The mark in question is apt to cause confusion as the products do not contain exclusively nitrogen and zing. 25 Recourse dismissed. No order as to costs. Cases referred to: Plough Inc. v. The Republic
(1985)3 C.L.R. 1687; Peleticov. Registrarof Trade Marks
(1986)3 C.L.R. 490; 30 BirminghamSmall Arms C's Appn. [1907] 2 Ch. 396; Elliot v. Machine Tools [1970] R.P.C.
- * See. also. Law 63/
- 2161 Arcadian Corporation Inc. (No. 1) v. The Republic
(1986)Recourse, Recourse against the refusal of the respondent to register capital letters NZN as a trade mark in either Register "A" or Register "B". Chr. Chrysanthou, for the applicants. 5 5/. Ioannides (Mrs.), for the respondents. Cur. adv. vtilt. PIKIS J. read the following judgment. Sub judice is a decision of the Registrar of Trade Marks refusing registration of capital letters NZN as a trade mark in either 10 register "A" or register "B". Registration was refused for three separate reasons: (
- a)The descriptive nature of the mark referable the character or quality of the goods. to (
- b)Lack of distinctiveness. 15 (
- c)Likelihood of confusion. The applicants, an American Corporation, applied for the reg:stration of the mark involving reproduction of the aforesaid three letters of the alphabet in capital form and in equal size portraying the first letter in white and the 20 second two in black colour. Their counsel argued that the presentation of the three letters in the form described constitutes a device distinctive enough to merit their registration as a trade mark in class I of register "A" or in register "B". In further support of the claim to registrabil:ty of 25 .NZN he referred to the registration of the mark in the trade mark register in the U.S.A. and other countres listed in his address and the rights flowing from the Convention for the Protection of Industrial Property as subsequently re30 vised, ratified by Law 66/830). After reflexion, on the rival submissions, to my mind the Registrar was perfectly entitled to refuse registration for each of the three -Teasons founding his decision. To be0> See also 63/65. 2162 3 C.L.R. Arcadian Corporation Inc. (No. 1) v. The Republic Pikis J. gin, the Convention for the Protection of Industrial Pro : perty does not make the trade mark reg strable in Cy prus on account of registration in the U.S.A., the country of incorporation of the applicants. In Plough Inc. v. The 5 Republic^) it was explained that registration of a trade mark in a signatory country does not automatically make registration of the same mark in a fellow signatory coun try obligatory (see reservations made in SB2 Article 6). Registration remains, subject to domestic law, largely dc10 pendent on considerations of distinctiveness of the mark. In the same case it was explained by reference to En glish caselaw that registration in another country is per se an inconsequential factor. Rarely lack of distinctiveness of the mark itself may be 15 remedied by long and wide-spread user, a factor peculiarly associated with the market of a product in a particular country and length of time associated with such user. The applicants began margeting in Cyprus their products in 1984 and though they seemingly gained a foothold in the 20 market for fertilizers, neither the time link nor the general market for the products for the particular brand of ferti lizers of applicants could fill the gap from the absence of the element of distinctiveness. Distinctiveness 25 Distinctiveness is the hall-mark of registrability, as pointed out in Peletico v. Registrar of TradeMarkslZ). No one has the right to monopolize the use of letters of the alphabet, common property of mankind. If this were to happen endless disputes would arise. In Kerly{$)it is 30 explained that the use of initials and other letters in any combination lacks, as a rule, distinctiveness and cannot be registered. Exceptionally this may be allowed upon proof of distinctiveness gained by the use of the letters over, a long period and widespread trading under that name as 35 in the BSA case where the initial letters of Birmingham Small Arms gained a strong association with the products !» (19851 3 C.L.R. 1687. <»
(1986)3 C.L.R.
- β > Law of Trade Marks and Trade Names, 10th Ed., para. 8-
- 2163 Pikis J. Arcadian Corporation Inc. (No. 1) v. The Republic
(1986)of the traders(i). There is no suggestion in this case that NZN is so closely associated with the products of the applicants as to distinguish them on that account. Nor does their representation amount to a visually distinctive device. This can only occur as emphasized in the case of 5 2 Elliot Machine ToolsC -), if visual distinctiveness is so striking as to override the significance of non distinctive features. This was certainly not the effect of NZN in this case. The prominent features of the mark were the letters themselves and the bell they expected to ring about the 10 content of the fertilizers of the applicants. Descriptiveness Assuming contrary to what is stated above that applicants overcame the obstacle of lack of distinctiveness, reg'stration would again stumble on the way their mark pur- 15 ports to describe the character and quality of their products that do contain nitrogen and zing. The lacing of the last two letters in black is designed to stress the association of the two letters, whereas the combination of "N" and "ZN" as two separate elements of the mark tend to 20 be descriptive of the goods. It must be noted that letters "N" and "ZN" symbolize nitrogen and zing respectively. Likelihood of Confusion But as the fertilizers do not consist exclusively of nitrogen and zing, the trade mark proposed by the applicant 25 would be apt to cause confusion; therefore, the Registrar was right to reject registration on that account as well. For all the above reasons the recourse fails. The decision of the Registrar is confirmed pursuant to the provisions of Article 146.4(a) of the Constitution. No order as to costs. Recourse dismissed. No order as to costs. d> Btrminaham Small Arms C's Appn [ 1 9 0 7 ] 2 Ch 396 Q> [19701 R.P.C. 79. 2164 30