(1936)1986 April 19 fPiKis, J.J IN THE MATTER OF ARTICLE 14b OF THE CONSTITUTION PELETICO LIMITED. Applicant, v. THE REGISTRAR OF TRADE MARKS. Respondents. (Case No. 542/85). Trade Marks—The Trade Marks Law, Cap. 268, ss. 13 and 19—Distinctiveness—Laudatory words—Association between the mark and the goods—// strong, it may import distinctiveness—When considered as strong—Application for registration of the word TROPHY for paints and related 5 products—In the circumstances correctly rejected. The respondent refused registration of the word TROPHY as a trade mark for applicant's products, namely paints and related products, on the following grounds, i.e. (a) Connection of the mark with the character or quality of 10 the goods, and (b) Lack of distinctiveness. As a result applicants filed the present recourse. Held, dismissing the recourse:
(1)The word TROPHY in whatever context it may be used signifies a prize or reward. It is a laudatory word connoting praise. For this 15 reason its use is not neutral about ihe character or quality of the goods. The inference that it is descriptive of the character or quality of the goods cannot be denied.
(2)Distinctiveness is the hallmark of registration as well as the test of determining the likelihood of deception under 20 s.13 of Cap. 268. A word may be created with imagination and sound 'or look attractive, but it must not be des490 3 C.L.R. Peletico Ltd. v. Registrar of Trade Mark· criptive,confusing or deceptive as to the origin, quality and attribute of the goods. 5
(3)Strong association of the mark with the goods may exceptionally import distinctiveness. For this to be the result there must be long user in point of time and trading on a large scale. There was evidence of neither in this case, nor can anyone suggest that the association between TROPHY and the applicant's products was such ai to import distinctiveness. 10 Recourse dismissed. So order as to costs. Cases referred to: Crosfield(Joseph) and Sons App.
(1910)1 Ch. 130; Stavrinides Clothing v. The Republic
(1983)3 C.L.R. 98; 15 Plough Inc. v. The Republic
(1985)3 C.L.R. 1687; Granadav. The Republic
(1985)3 C.L.R. 207; El Greco Distillersv. The Republic
(1985)3 C.L.R. 1189; Societe Anonyme v. The Republic
(1986)3 C.L.R. 350. Recourse. 20 Recourse against the decision of the respondent refusing registration of "TROPHY" as trade mark for the paints and related products of the applicants. K. Chrysostomides, for the applicants. 5/. loannides (Mrs.), for the respondents. 2.Ί Cur. adv. vttlt. PIKIS J. read the following 30 judgment. At issue is the "«lidity of the decision of the Registrar of Trade Marks re fusing registration of "TROPHY" as trade mark for the paints and related produtcs of the applicants, manufacturers of building material. Applicants applied, in the first place, for the registrat:on of "TROPHY" in class 2 of part \V of the register. After the initial refusal of the Registrar 491 Plkis J. Paletico Ltd. v. Registrar of Trade Marks
(1988)(communicated on 24.10.1984), applicants sought a hearing of their application under the Trade Mark Rules requesting registration of 'TROPHY" in part Έ ' of the register as an alternative in the event of the Registrar finally ruling out registration in part *A' of the registerO)· It is doubtful 5 whether it was at all open to the Registrar to consider the alternative application of the parties in view of the provi sions of s. 19 of the Trade Marks Law -Cap. 268 -envisag ing an application to the Registrar in the prescribed form for registration in either part *A* or part *B' of the register. 10 However, it is unnecessary to pursue the matter further for the reasons of the Registrar refusing registration in part Ά ' of the register are equally relevant and applicable to the disposal of an application for registration in part 'B' of the register. After reconsideration of the matter the Re- 15 gistrar persisted in his views reaffirming his origmal deci sion^). The reasons for refusal were:(a) Connection of the mark with the character or qu ality of the goods, and (b) Lack of distinctiveness. The word "TROPHY" in whatever context it may be used it invariably signifies a prize or reward
(3). It is a lau datory word connoting praise. For this reason its use is not neutral about the character or quality of the goods. In the opinion of the Registrar it is descriptive of the character or 25 quality of the goods, an inference that cannot be denied having regard to the settled meaning of the word. The position with regard to laudatory words is summa rized \nKer!y
(4)as follows: "A merely laudatory epithet "> See letter dated 4 3 1985 «) See letter of 4 4 1985 u> See The Concise Oxford Dictionary, 6th E d , ρ 1244, and Mega Angloelliniko Lexiko, Tome 4. ρ 713 '•*> Law of Trade Marks and Trade Names, 10th Ed , ρ 124 492 20 3 C.L.R. 5 10 Peletico Ltd. v. Registrar of Trade Marks Pikis J. is not registrable as a trade mark regardless of the extent of use. This was established in the "Perfection" case. The same rule applies to nouns with a settled laudatory signification(i). The registrability of "Perfection" as a trade mark was debated in Crosfield (Joseph) & Sons Appn.(*). The registration was refused because the word was not adapted to distinguish the goods tending to be descriptive of the goods sold under that name. To the same tenor and effect is the decision of A. Loizou, J., in the Cyprus case of Stavrinides Clothing v. The Republic
(3). The learned Judge found the word "YOUNGSTER" to lack disrnctiveness and refused registration on the ground that it aimed to be descriptive of the goods sold thereunder. Distinctiveness is, as I had occasion to point out in Plough Inc. v. Republic^) the hallmark of registrability as well as the test for determining the likelihood of deception or confusion under s. 13, Cap. 268
(5). in Plough Inc. the Court refused registration of "TROPICAL BLEND" for lack of distinctiveness. Distinctiveness is ordinarily achieved 20 by coining a word and making its use thereafter the property of the owner of the goods. Of course a word may be created with imagination and sound or look attractive as a brand name for the goods. What it must not be is descriptive of the goods, confusing or deceptive as to the origin. 25 quality and attributes of the goods. 15 Strong association of the mark with goods sold under it may exceptionally^) import distinctiveness. For this to be the result of the association, there must be long user in point of time and trading under that name on a large f» See Kerly (supra), p. 114.
(2)[ 1 9 1 0 ] 1 Ch. 130. •'3>
(1983)3 C.L.R. 98. «>
(1985)3 C.L.R. 1687. «> Granada v. The Republic
(1985)3 C.L.R. 207; El Greco Distillers v. The Republic
(1985)3 C.L.R. 1189: Socrete Anonyme des Eaux Minerafes d'Evian v. Republic (judgment delivered on 22 2 1986 published in
(1986)3 C.L.R. 350. (» See s. 12
(3)Cap. 268. 493 Pikis J. Peletico Ltd. v. Registrar of Trade Marks
(1986)scale. There was evidence of neither in this case nor can anyone conceivably suggest that the association between "TROPHY" and the products of the applicants was such as to import distinctiveness. For the above reasons the application fails. It is dismissed. Let there be no order as to costs. Recourse dismissed. No order as to costs. 494