(1987), 1987 January S [TR1ANTAFYLL1DES Ρ SAW1DES LORIS bTYLIANlDES KOURRIS JJ 1 G A KERANISAE KAPNOVIOM1CHANIA «ETHNOS» OFGREECE Appellant-InterestedParty ν ALFRFDDUNHILL LIMITED CIGARETTEMANUFACTURERSOF UΚ Applicants-Respondents, ν T H E C O M M I S S I O N E R OF T R A D E M A R K S Respondent (Revisional Jurisdiction Appeal No 497} Trade Marks—The Trade Marks Law Cap 263 ss ll(l)(e) 13 and 14—User abroad—Irrelevant as toregistrability onground ofdistinctiveness(s ll(l)(e)) bui relevant andadmssible incases ofdeception or confusion (s13and14) Administrative Law—Due inquiry—Trade marks—Application for registration of— Application opposed—In reachingsubjudice decision the Registrar ignored relevant and admissible ei idence—Subjudice decision annulled for failure to carry out a due inquiry The applicants respondents who are the proprietors of registered trade marks .n respect of cigarettes the registration beinglimited to red or maroon ond gold colours opposed an application submitted Cy the appellant interested party foi registration of the word OSCAR in respect of cigarettes flie tespondent-Registrar however acceptedregistrationof the saidword in Part Β of the Register with no limitation as to colours and as a result the applicants respondents fileda recourse tothisCourt The Judgeofthis Court who triedthe recourse annulled the ;>aid decisionofthe Registrar «for wrong pxernse of discretion» Hence the present appeal In reaching the sub >udice decision the Registrar treated as irrelevant evidence to the effect that in Greece the appellant-interested party uses his trade mark in similar colours as those of the applicants-respondents on the ground that under the law and the authonties it is user in this country that \= laken into consideration andnot user abroad Held dismissing the appeal
(1)It is clear that the Registrar misconceive' the issue before him Even it the issue was confined to relevance and 134 G.A. Keranls v. Dunhill Ltd 3 C.L.R. admissibility of evidence, evidence of user abroad is irrelevant a inadmissible only for purposes of registrability of atrademarkonthegrou ofdistinctiveness (Section11
(1)(e)of Cap.268)butnotincases of decepti orconfusion (sections 13and 14 of Cap. 268). 3 10
(2)The primary duty of the Registrar was to carry out a proper and d inquiry before reaching the sub judice decision Inthis case by ignonngt evidence aforesaid, which might be indicative of the intention of 1 interestedpartytousethesamecoloursinCyprusdieRegistrarfailed toca outa dueinquiryanditisfor thisreasonthatthesubjudicedecisionought havebeenannulled. Appealdismissed No orderas to coi Casesreferredto loanmdesv TheRepublic
(1972)3 C L R 318 15 Appeal. Appeal against the judgment of a Judge of the Supreme Cot of Cyprus (L. Loizou, J.) given on the 11th Apnl, 19i (Revisional Jurisdiction Case No.260/77)* whereby the decisic of therespondenttoregister thetrade markof the interested pai 20 No.B. 14955 consisting of the word «Oscar»and design inpart of theregister of Trade Markswas annulled. L. Demetriades with I. Loizidou (Mrs), for the appellar interested party. G. Nicolaides with T. Economou. for respondent-applicant 25 Noappearance for the respondent. Cur. adv. vi TRIANTAFYLLIDESP.:The Judgment of the Court will [ delivered by Lons,d. LORISJ.: Thepresent appeal of the interested party, isdirect* 30 against thejudgment of aJudge of thisCourtinrecourse No. 26' 77 whereby thedecision of the Registrar of TradeMarksdatedtl 18th July 1977, (toregister the trade mark of the interested par No. Β 14955 consisting of the word «OSCAR» and design inpc Β of theregister of Trade Marksand dismiss the Opposition of tl 'Reported asAlfredDunhillLtd ν Trie Comrr-ffion*ro;Tiade Maih? IIQS5'· 3CLR $ 135 -orisJ. G.A. Keranis v. Dunhlll Ltd
(1987)Dplication against such registration) was annulled «for wrong iercise of his discretion» The salient facts are bnefly as follows. The applicants are the propnetors of trade marks under Nos. 3286 and 14557 registered in Cyprus in 1967 and 1972 5 •spectively, in respect of cigarettes the registration being limited > red or maroon and gold colours On the 4th May, 1973, the interested party applied for qistration of the trade mark «OSCAR» in respect of cigarettes, "nchwas acceptedby theRegistrar for registration inPartΒof the 10 gister under No Β 14955, with nolimitation as tocolour The trade mark was thenadvertised intheofficial Gazetteofthe public, whereupon theapplicantsfiled anopposition against its qistration on the grounds that the proposed trade mark so >sely resembled theirown thatitwas likelytocause confusion or 15 ception and further that the interested party should enter a ndition not to use the proposed mark in the colours used by plicants The interested party filed a counter-oppositionstating thattheir de mark has no resemblance to that of the applicants and is 20 •tmguishable from itand thatthereis nolikelihood of confusion lsed in the same colours as that of the applicants After the filing of the opposition and the counter-opposition as )resaid a heanng took place before the respondent Registrar ίο gave his decision on the 18th July 1977, dismissing the 25 •position of the applicantand directing thatthesub-judice trade irk do proceed for registration in Part Β of the Register as vertised The relevant part of the decision of the Registrar is at pp 7 and if his decision and reads as follow 30 «The applicants, put forward evidence to prove that the plicants' trade mark is used inGreeceinsimilar colours as those theapplicants. Underthe Law andtheauthonbesitisuserinthis untry that is taken intoconsideration and notuser abroad. This :lear from Kerly 10th edition page 146, para 8-67 35 1 quote 136 3C.L.R- G.A.Keranisv.DunhUlLtd Loris 'On an application to register a mark for use in the Unite Kingdom,itisdistinctiveness intheUnitedKingdomthatis i question.' · Therefore evidenceofuseabroadisirrelevantandIdidnottak 5 itintoconsideration.InCyprusapplicant'strademarkisnotuse< andthisisclearfromtheevidence even of theopponents.» Itisclearfromtheaboveextractofthesub-judice decisionofth* Registrarthatthelattermisconceived theissuebefore him;even i cheissuewasconfined torelevanceandadmissibility of evidence 10 evidence of user abroad is irrelevant and inadmissible only fo purposes of registrability of a trade mark on the ground ο distinctiveness unders.11(e)ofCap.268.Butthisdoesnotextenc tocasesof deceptionorconfusion (ss 13and 14of Cap.268). A: stated in Kerly's 10th ed. at p.61 (para. 4-31) «evidence ο 15 deception and confusion abroad may be relevant in oppositior proceedings before the Registrar, particularly if the logica inference from such evidence is that there would be ί correspondinglikelihood of deceptionorconfusion inthe Unitec Kingdom.» 20 In fact the primary duty of the Respondent Registrar, as ar Administrative Organ,was tocarry outadueandproperinquiry before reaching at thesub-judice decision; and itis crystal cleai from theaforesaid extractofhisdecisionthathefailedtocarryou such anInquiryby ignoring altogethertheevidence tendered b\, 25 theapplicantatthehearingthattheinterestedpartywassellingin Greece its 'OSCAR' cigarettes in packets of thesame coloursas thoseoftheapplicants,whichmightbeindicativeoftheirintention touse thesamecoloursinCyprus,afactor which mightbe found tobe relevant totheissueoftheprobability ofcausingdeception 30 orconfusion. Itiswellsettled inadministrative Lawthatfailure to makeadueenquiryisagroundforannulment;«itisanidependent sufficient by itself, ground of annulment» (Ioannides v. The Republic
(1972)3 CLR318 atp.326). Thesubjudice decision therefore oughttohave beenannulled 35 on the ground of failure of the respondent to carry out a due inquiry,whichheshould nowproceedtoconduct. Intheresulttheappealisdismissedwithnoorderastoitscosts. 137 -orisJ. G.A. Keranls v. Dunhffl Ltd
(1987)Before concludingwemustobserve,for purposes ofguidance ι thefuture, thatlearnedcounselfor theRepublicwhoappeared ι the litigation at the first instance level for theRespondent iegistrar,didnotappearbefore usonappealbutheinformedthe ^ourt in writing that heagreed with thejudgment of thetrial 5 udge.We areoftheviewthattheCourtwouldhavebeenassisted onsiderably ifhehadappeared alsobefore usinordertoexplain •ivavocethestandoftherespondentinthisappealandwe expect hiscourse tobe followedinfuture. Appealdismissedwith 10 noorderastocosts. 138