clr/1987/1987_3_1420.pdf

(1987)1987October7 [SAWIDES,J) INTHEMATTER OFARTICLE 146 OFTHE CONSTITUTION SOCIETE NATIONALE ELFAQUITAINE, Applicants, v. THE REGISTRAROFTRADE MARKS, Respondent. (Case No. 356/84} Trademarks —Registrabilityof— Judicialcontrol—Pnnaplesapplicable. Trademarks —Registrabilityof— Inventedwords—Meaningof. Trademarks—Registrabilityof—Fact ofregistrationinothercountries— Weight to beattachedtoit. Trademarks—Registrabilityof— TheTradeMarksLaw,Cap.268, sections 11

(1)and 13. 5 Acts or decisionsin thesenseofAn. 146.1of the Constitution— Trademarks — Decision refusing registration — Λisan administrative actin the domain of publiclaw. Administrativelaw—General pnnaples—Recourse forannulment—Facts which 10 had not been placed before die administration cannot be accepted at the heanng. By means of this recourse the applicants impugn the decision of the Registrar of Trade Marks, whereby their application for registration ofthe words «ATLANTA MARINE» asatrade mark inrespect ofindustrial oilsand 1 5 greases,lubricants, motorfuels, and oils,speciallyformulated for cross-head engine lubricants,wasdismissedonthefollowinggrounds, namely: (a)The proposed trade mark, contrary tosection 11

(1)*of Cap.268 had directreference tothecharacterorqualityofthegoods,itwasa geographical name and itlacked distinctiveness. (b)Theproposed trademark violated section 13* of Cap. 268. *Quotedatp 142?post 1420 3 C.L.R. SocieteNationalv.Reg.Trade Marks Insupportof hiscasecounselforapplicantssubmitted interalia,that (a)Therecourseisbywayoire-tnalandtheCourtisfreetoexerciseitsown discretion Apparently,thtssubmissionwashasedonsection50cfCap 268 (b)Theproposedtrade ma.k consistsci «nventcdw r Is 5 (c)The mark ha«use in Cyprus and isregiite'ed mFngland as .ATLANT MARINE. (d)The Registraroverlooked the fact thatthe mark wasregistered inother countnes *v It must, however, be noted that the fact referred to in submission «c» hereinabove hadnot beenplacedbefore the Registrar 15 Held, dismissingtnereLOurse (\) Pnortothe Independence ofCyprusthe decision of the Registrar of Trade Marks could be challenged by anappeal, whichwasbywayofreheanng AftertheIndependenceofCyprus,however, a decision of the Registrar of Trade Marks being an administrative act, is subjecttoarecourseunderArticle 146oftheConstitutionandnotanappeal 20 ^•O 30 35

(2)The powers of theSupreme Court asanadministrative Court arewell settledandit isestablishedth.it th»;Court will notinterferewith thediscretion of theadministration solongasthedecision wasreasonably opento itifdue weight has been given to all matenal fa^ s it has not been based on a misconception of law or fact and it was no;exercised in excess or abuseof powers Andthisissoevenif inexercising.tsown discretion on thements,it would havereachedadifferent conclusion

(3)Factswhich hadnot beenplaced before the Registrar andinfactcame intoexistenceafterthesub|udicedecision cannot beacceptedattheheanng of arecourse,but mayconstitute new matenal inrespect ofanapplication to theRegistrarfor reconsideration of the matter

(4)in the present case the Registrar after making reference to well known dictionanes refusedregistrationof the proposed mark onthegroundthatthe word«Atlanta*isaqeoqraphtcalnameofacityintheUnitedStatesandoffour other smallercitiesandtheword«manne-hasacleargrammatical meaning. thatofpertainingtothesea,andthatthecombinationofthetwowords,which could not be considered asinvented words in relation tothe goods covered bysuchtrade mark mightcreatethewrongimpression about thegoodsand waslikelyto causeconfusion orto deceive Inthelight of theauinontiesconcerningthemeaningoftheterm«invented word»,thedecisionthatthemarkinquestiondidnotconsistofinventedwords wasreasonablyopentotheRegistrar

(5)TheRespondentdidnotoverlookthefactofregistrationoftheproposed trade mark in other countnes However, themere factof suchregistrationis 1421 Societe Nationalv. Reg. TradeMarks

(1987)«of little or nobeanng on whether the mark is capable of distinguishing the applicant'sgoods inthiscountry»{Needle-Tip TradeMark (1973]RΡC 113 atρ 118)

(6)Inthelightof thematenalbefore theCourttheconclusionisthatthesub judice decision was reasonably open tothe Registrar of TradeMarks Recoursedismissed Costsagainstapplicants Casesreferredto WhiteHorseDistillersLtd ν ElGrecoDistillersLtd andOthers

(1987)3 C LR 531 10 TheEastmanPhotographicMatenalsCompanyLtd ν TheComptrollerGeneralof Patents,Designsand TradeMarks [1898] AC 571 De Cordovaν Vick [1951] 68 RP C 103, Minnesota Mining&Manufactunng Co s Appn [1948] 65 RΡC 229, IWS Nominee Co Ltd ν TheRepublic

(1967)3 CLR 582 15 Tsangans ν TheRepublic

(1975)3 C LR 518, Merck ν TheRepublic

(1972)3 C L R 548. EffemsAG ν TheRepublic

(1985)3 CLR 793 Need/e-rip7radeMarM1973]RPC 113 Recourse. 20 Recourse against the refusal of the respondent to waive the objections against the registration of the words «ATLANTA MARINE»wntten inplain lettersas atrademarkinClass 4 ofPart Aof the Register of TradeMarks Chr Theodoulou, for the applicants 25 St hanntdes (Mrs),for therespondent Cur adv vult SAWIDES J. read the following judgment. The applicants a company incorporated in France, applied on the 10th October, 1980, for the registration of the words «ATLANTA MARINE» 30 wntten in plain tetters,as a trade mark in class 4 of PartA of the Register of Trade MarKs, in respect of industrial oils and greases, lubncants, motor fuels, oils specially formulated for cross-head 1422 3 C.L.H. Soclete Nationalv.Res-TradeMarks S a w i d e e J. engine lubricants.The respondent before taking any decision on the matter, asked the applicants' advocate to give htm the meaningofthewords«ATLANTAMARINE»inGreekaccordingto Rule 29 of the Trade Marks Rules. 1951-1971. On the 13th 5 December, 1980applicants'advocate informed the Registrarthat the words «ATLANTA MARINE» are' invented words. The application havingbeenconsideredbytherespondent, wasonthe 30th December. 1980 objected to on the ground that the proposed trademark,contrarytotheprovisionsofsection 11

(1)of 10 the Trade Marks Law, Cap. 268, had direct reference to the character orqualityofthegoods,itwasageographical name,and it lacked distinctiveness. Also, that itcould not be registered asit wasviolatingtheprovisionsofsection 13oftheTrade MarksLaw, Cap.

1. 15 On the 16th February. 1981,the applicants applied, through their advocate, for a hearing and the case was partly heard, after several adjournments, on the 9th October, 1981 and was further adjourned. On the 21st January. 1983 the applicants' advocate filed an application for the amendment of the trade mark to 20 «ATLANT' MARINE». The appliation having been considered again, was,on the 26th February. 1983,objected toon the same grounds as the original application. The applicants' advocate applied for another hearing which took place, after a number of adjournments, onthe 10May,1984onwhichdateanaffidavit was 25 filed on behalf of the applicants to the effect that the words «ATLANTA MARINE» or «ATLANT' MARINE» are invented words, that the word «MARINE» refers to the sea and the word «ATLANTA» to the Atlantic Ocean and also that the same mark wasregisteredinmanycountries.Meanwhile,however,onthe8th 30 May, 1984, the applicants' advocate again applied for amendment of the trade mark to «ATLANTA MARINE»as inthe original application. After the new hearing was concluded the respondent informed the applicant of hisdecision by letter dated the 22nd May, 1984, stating that the objections contained in his 35 letter of the 30th December, 1980could not be waived and were confirmed. The applicants' advocate applied for a reasoned judgment which was commui oated to him by letter dated the 16thJuly,
2. Asa resultthe applicantsfiled the present recourse challenging 40 thesubjudice decision and prayingfor its annulment. 1423 SavvidesJ. SocJeteNationalv.Reg.TradeMarks

(1987)Thegroundsoflawrelieduponbycounselfortheapplicantsare that1.The decision isnotduly reasoned.

1. The respondent misdirected himself and or proceeded on wrong principles inarrivingathisdecision. 5
2. TherespondentactedunderamisconceptionofLawand or fact. 4.The respondent failed toconsiderwhether the proposed mark was inherently adapted to or capable of distinguishing the applicants'goods. 10
3. The respondent wrongly translated the words constitutingthe markand/or madewrongassumptions about their meaning etc.
4. Therespondent failed totakeintoconsideration the fact that the mark is world famous and registered in many 15 countries of the world and failed also to take into consideration theaffidavit of Mrs.Elisabeth Kazatchkine. 7.The respondent exercised hisdiscretion wrongly. The affidavit of Mrs.Kazatchkine isthe one filed bycounsel for the applicantson 10.5.1984,reference towhichhasalreadybeen 20 made in the explanation of the facts of the case, and appears as reds29-30 inthe fileof thecase,which isExhibit
5. Itshould be stressed at thisstage, that the words finally sought to be registered were «ATLANTA MARINE» and not «ATLANT' MARINE». Byhiswrittenaddresscounselfortheapplicantsin expounding on his grounds of law submitted that the mark «ATLANTA MARINE» consists of invented words, a fact supported by the affidavit of Mrs. Kazatchkine, which have no immediate or any relation with the character or quality of the goods. He further 30 contended that the words forming part of the trade mark should have been taken together and not separately, as was wrongl· done by the Registrar. In dealing with the grammatical and georgraphical meaning of the words, counsel submitted that th> mark isregistrable since Atlanta city hasno particular reputatio > 35 fortheproduction of thegoodsreferred tointheapplication, and that the Registrar could have accepted the mark under the
6. 25 3 CX.R. Soclete Nationalv. Reg- TradeMarks Saw i d e · J. conditionthatthegoods would notbemanufacturedinAtlanta. As totheword «marine» hesubmitted thatsuch word incombination withtheword «Atlanta»andthefactthai-xmieofthegoods areoils for ships, gives to the mark its distinctiveness. Counsel further 5 argued thattherespondentfailedtotakeintoaccountthefact that the particular trade mark is world famous and registered in many countriesof the wold,thathe hasactedunderamisconceptionof fact andlaw, thathefailed toconsiderwhethertheproposed mark was inherently adapted or capable of distinguishing the 10 applicants' goods, thatthe decision is not duly reasoned andthat the respondent exercised his discretion wrongly. Counsel for therespondent,onthe otherhand,contendedthat the sub judice decision was properly and lawfully open to the Registrar intheexercise of hispowers undertheTradeMarks Law. 15 She submitted that the proposed trade mark is not registrable either in Part A or Part Β of the Register as it consists of words which are directly descriptive and notadapted to distinguish the goods of the applicants and the Registrar rightly reached the sub judice decision. In concluding, counsel for the respondent 20 submittedthat:(a)Theapplicantsfailedtodischarge theonuscastuponthemto satisfy the respondent thattheproposed trade mark is adapted or capable of distinguishing their goods within the meaning of sections 11 and 12 of Cap.
7. Alsothattheyfailed tosatisfy the 25 respondentthatthe registration of their markwillnot contravene the provisions of section 13 of the Law. (b) Therespondentrightlycametotheconclusion thatthemark propounded for registration did not consist of invented words since they are neither new for freshly coined words and are to be 30 found in dictionaries. After the written addresses had been concluded and the case was fixed for clarifications andevidence counsel for theapplicants filed twoaffidavits, (a) Onedated 13th September, 1985 swom by the same affiant (Mrs. Kazatchkine), including, inter alia, the 35 contention that «the mark has use in Cyprus and is registered in England under No. Β 1,165,800 as «ATLANT' MARINE».(B)An affidavit swom by Yiannoula Theofanous, advocate's clerk atthe office of counsel for the applicants, dated 15th October, 1985, 1425 i a w l d e sJ . Soclete National v. Reg.Trade Marks

(1987)ttachinga photocopy of a page from theTradeMarksJournalof England dated the 7th August, 1985 in which the registration of ie trade mark «ATLANT' MARINE» was advertised underNo. 11,165,800. Counsel for the respondent inheraddress inclarification stated lat the mattersraised intheaffidavits of the 13th September and ie 15th October, 1985 had notbeen placed before the Registrar itheratthe hearing oratany stage before thesubjudice decision ;as taken and therefore they could notbe advanced insupportof ie applicants' case. 5 As Ipointedout to counsel for the applicantsinthecourse of the learing the registration of the trade mark in England was notin espect of«ATLANTA MARINE»but«ATLANT' MARINE»andthat τ any event material which was not placed before the Registrar nd infact came intoexistence after thesubjudice decision, could 15 iOt be accepted at the hearing but might be new materia! in upportofan application totheRegistrar forreconsiderationof the ase. Istill hold the same view and I consider such material as relevant for thepurposes of the validityofthesubjudice decision nd any argument based on it by applicant's counsel is also 20 relevant. The approach of ourSupreme Court,astowhen theCourtmay terfere with an administrative decision regarding the gistrability of a trade mark, has been recently reviewed by the ill Bench in Revisional Appeal No.505 (White Horse Distillers 25 d. v. ElGreco Distillers Ltd. and others)in which judgment was livered on20 thFebruary, 1987 (notyet reported)*. Itwas held that case that:«Itis thewellestablished approach of ourSupremeCourt, on the basis of the principles governing the exercise of its 30 jurisdiction as an administrative Courtinthefirst instanceand on appeal, that it does not interfere with an administrative decision regarding the registrability of a trade mark if such decision was reasonably open totheRegistrar of TradeMarks and does notsubstitute itsown evaluation intheplace of that 35 of the Registrar». With the above in mind Icome now to consider the position in ι present case. x>rtedtn

(1987)3C.L.R.

1. 1426 10 3C.L.R. SocJeteNationalv.Reg.TradeMarks S a w l d e s«
2. The relevant provisions relied upon by the respondent in arriving at his decision to object to the legistration of the trade mark,thesubject matterofthisrecourse,aresections11

(1)and 13 oftheTradeMariaLaw, Cap.268. 5 Section 11

(1)providesasfollows:«11

(1)InorderforatrademarktoberegistrableinPartAof the register, it must contain or consist of at least one of the following essentialparticulars:- 10 (a)Thenameofacompany, individual,orfirm, represented inaspecial orparticular manner; (

1. b)the signature of the applicant for registration or some predecessor inhisbusiness; (c)aninvented word orinvented words; 15 20 (
2. d)a word or words having no direct reference to the character or quality of the goods, and not being according to itsordinary signification a geographical name ora surname; (
3. e)any other distinctive mark but a name, signature, or word or words,other than such as fallwithinthe descriptions in the foregoing paragraphs (a), (b), (
4. c)and (d),shall not be registrableundertheprovisionsofthisparagraphexceptupon evidence of itsdistinctiveness.» and section 13readsas follows:- 25 «Itshall notbe lawful toregister asatrademark orpart ofa trade mark any matter the use of which would, byreasonof itsbeinglikelytodeceive orcauseconfusion orotherwise,be disentitled to protection in a court of justice, or would be contrary tolawor morality, or anyscandalous design.» Counsel onboth sidesmade extensivereference toKerly'sLaw of Trade Marks and Trade Names and to a number of relevant 30 English casesreferred totherein. Theterm«inventedword»wasdiscussed atsome lengthby the House of Lords in the «Solio» case, The Eastman Photographic MaterialsCompany Ltd. v. The Comptroller-General of Patents, Designsand TradeMarks{1898]A.C.571.Thefollowing passages 35 from the speeches in the *Solio»case sum up the position (See Kerly's Lawof Trade Marksand Trade Names, 12th Edition, pp. 80-82,.paras 8-18):1427 S a w l d e s J. Soclete Nationalv. Reg. TradeMarks

(1987)«Lord Macnaghten said; 'If it is an invented word -if it is 'new and freshly coined' (to adapt an old and familiar quotation)- itseems thatitisnoobjection thatitmaybetraced to a foreign source, orthatitmay contain a covert and skilful allusion tothe characterorquality of thenoods.I donotthink 5 thatitis necessary thatitshould be wholly meaningless.' Lord Halsbury said: Ί desire to give my opinion with reference to the particular word, and not go behind it. I can quite understand suggesting otherwords - compound words, or foreign words -as to which itwould be impossible to say 10 thatthey were invented words, although,perhaps,never seen before, orthatthey didnotindicatethecharacterorquality of the goods, although as words of the English tongue they had never beenseen before. Suppose aperson were toattemptto register as a single English word 'Cheapandgood', or even 15 without taking so gross an example, using a word so slightly differing from an ordinary and recognised word as to be neither aninvented word nor,avoiding the prohibited choice of a word, indicating character or quality. The line must be sometimes difficult todraw; but,tomy mind,thesubstance of 20 the enactmentisintelligible enough,and theComptrollerhas to make up his mind whether insubstance there has been an infringement of the rule.' Lord Herschell said: 'If the word be an 'invented' one,I do not think the quantum of invention is at all material. An 25 invented word isallowed tobe registered asatrade mark,not as a reward of merit, but because its registration deprives no member of thecommunityof therightswhich hepossessesto use the existing vocabulary as he pleases. Itmay, no doubt, sometimes be difficult to determine whether a word is an 30 invented word or not. I do not think the combination of two English words is an invented word, even although the combination may not have been in use before; nordo I think that a mere variation of the orthography or termination of a word would be sufficient toconstitutean invented word, if to 35 the eye or ear the same idea would be conveyed as by the word in its ordinary form. Again, I do notthink thata foreign word is an invented word simply because it has not been current in our language. At thesame time,I am notprepared to go so far astosay thatacombinationof words from foreign 40 1428 3 C.L.R. Societe Nationalv. Reg. TradeMarks S a w i d e s J. languages so littleknown inthiscountrythatitwould suggest no meaningexcept toafew scholarsmightnotbe regarded as an invented word.' 5 10 15 20 LordShandsaid: Ίagree.... inthinking,especially after the decision tobe given inthiscase,thattheComptroller-General will be fully warranted in taking care that there shall not be admitted, undertheguise or cover of words called 'invented' by theapplicant,words really inordinary use,which might, in a disguised form, have reference tothecharacterorqualityof the goods. Theremust be invention,and nottheappearance of invention only. It is no possible to define the extent of invention required, but the words, Ithink, should be clearly and substantially different from any word in ordinary and common use. Theemployment of a word insuch use, with a diminutive or a shortand meaningless syllable added toit,or a mere combination of two known words, would not be an 'invented' word, and a word would not be 'invented' which, withsometrifling additionorvery trifling variation,still leaves the word one which is welt known or in ordinary use, and which would be quite understoodas intended to convey the meaning of such a word.» In De Cordova v. Vick[1951] 68 R.P.C. 103 itwas held by the Privy Councilthat«Vapour rub» hadanobvious meaningandthus notquitetobe invented, itbeing «only commonsense toinferthat 25 the word producedby thiscombination(«vapour» and «rub») was intended, nottoconceal,butactually tosuggest thenatureof the substance that it was to be applied to». {See Kerly (supra) p. 82 paras 820). In Minnesota Mining & Manufacturing Co. 'sAppn [1948] 65 30 R.P.C. 229 it was held that the word «Scotchlite» was merely a combination of the word «Scotch» and the misspelt word «light» and so itwas neitheran invented word nordistinctive, (see Kerly (supra)p.28,paras 8-20). Inthe present case the Registrar after making reference towell 35 known dictionaries refused registration of the proposed mark on thegroundthattheword «Atlanta» isageographical nameof acity in the UnitedStates and of four othersmaller cities and the word «marine» has a clear grammatical meaning, thatof pertaining to the sea, and thatthe combinationof the two words, which could 40 not be considered as invented words in relation to the goods 1429 S a w l d e s J. Soclete Nationalv. Reg. TradeMarks

(1987)covered by such trade mark, might create the wrong impression about the goods and wa; linely tocause confusion or to deceive. Counsel for the applicants submitted that when there is a recourse from the Registrar's decision such recourse isby way of retrialand theCourtisfree toexercise itsown mindanddiscretion. 5 Apparently, thissubmission was based onsection50 of Cap. 268. This position however was applicable prior to theIndependence of Cyprus when anappealtotheCourtwas theappropriatemeans ι of challenging a decisioiι of the Registrar. After the independence of Cyprus however, a decision of the Registrar of Trade Marks, 10 being an administrative act. is subject to a recourse under Article 146 of theConstitutionandnotanappeal. In/.W.S. Nominee Co. Ltd.and TheRepublic

(1967)3 C.L.R.582 atpp.586,587, it was heldthat; « the primary and predominant purpose of the 15 registration of atrademark isitspublic oneandthata decision as thesubjudice oneis,therefore, oneinthedomainof public law, and notof private law». In the light of all the foregoing the sub judice matterfalls within „„ the ambit of Article 146. The powers of the Supreme Court as an administrative Court arewellsettled anditisestablished thattheCourtwillnot interfere with the discretion of the administration so long as the decision was reasonably open to it if due weight has been given to all material facts, ithas notbeen based on a misconception of law or 25 fact anditwas notexercised inexcessorabuse ofpowers. Andthis isso even if inexercising itsown discretion onthemerits,it would have reached a different conclusion [Kyriacos Tsangaris and The Republic

(1975)3 C.L.R.p.518; Merck v. TheRepublic

(1972)3 C.L.R. 548£/femsAG. v. TheRepublic

(1985)3C.L.R. 793and 30 the recent decision in Revisional Appeal No.505 White Horse DistillersLtd.v.ElGrecoDistillersLtd. and Others(supra)inwhich our case law regarding theregistrability of a trade mark has been reviewed. Intheresultthesuggestedoycounsel forapplicantsapproachof 35 the Courtin cases of registrability of trade marks iserroneous. As to the contention of counsel for the applicants concerning theregistration of thetrademarkinothercountries,afact whichin his submission was overlooked by the respondent, Ifind myself unable toagree as thatfact was brought tohis noticeand was part 40 of the material on which he relied in reaching his decision andin 1430 3 C.L.R. Societe Nationalv.Reg.TradeMarks S a w i d e s J. fact it is mentioned in his reasoned judgment. Asto the position when a mark has been registered in a foreign country and the bearing of such registration in proceedings for registration in Cyprus, as well as whether the mark iscapable of distinguishing 5 the goodsofan applicant inthiscountry, useful reference may be made to the decision in Needle-Tip Trade Mark [1973] R.P.C. 113, inwhich we read the following atp. 118: 10 15 20 25 30 «It seems to me that the mere fact that a mark has been registered in a foreign country has little or no bearing on whetherthemarkiscapable ofdistinguishingthegoodsofthe applicant in this country. Registration in the foreign country will have been allowed according to the law and practice in that country which may differ from that of this country and mayhavebeenallowedinthelightofparticularcircumstances and tradingconditions inthatcountry and which maybevery different tothose obtaining inthiscountry. Itmaybethat,ina case where a mark applied for here has already been registered inaforeign countrywithasystemoftrademarklaw similartoourown, ifa writtendecision oftheforeign tribunal allowingregistration intheforeign countryandwhichshowed the grounds of the decision and the matters taken into consideration were to be adduced on the application here,it mightbepersuasive asapieceofreasoningastowhether the mark should be registered here, if, but only if, similar considerationsapplied inthiscountry;butthat,itseemstome isas far as registration in a foreign country could be relevant to registrability here. Itisto be noted that in Swifts' case the Divisional Court wasinfluenced bywhat wasreferred toas 'a scholarly and persuasive judgment of the Full Court of the High Courtof Australia'. On the presentappeal, however,all that hasbeen relied upon isthemerefact ofregistration inthe countries mentioned and that mere fact, as I have already stated, isoflittleornobearingonwhetherthemarkiscapable ofdistinguishing the applicants' goodsinthiscountry». 35 In this present case, on the material before me, and having carefully considered the contents of the decision of the Registrar and the reasons for his objection, Ihave come to the conclusion that itwasreasonably open tohim todecide ashedid.Bearingin mind the wellestablished principle thattheSupreme Court does 40 not interfere with decisionsof an administrative organ nordoesit substitute itsown evaluation tothat oftheadministrative organif 1431 S a w l d e s J. SocJcteNationalv.Reg.TradeMarks

(1987)such decision was reasonably open tosuch organ I have reached the conclusion that the applicants have failed to show a good cause for interference by the Court to upset the decision of the Registrar which as I have already pronounced was reasonably open to him. Inthe resulttherecoursefailsandisherebydismissedwithcosts infavour of the respondent. Recourse dismissed. Costsin favourof respondents. 1432