(1987)1987November3 [SAWIDES J ] INTHEMATTEROFARTICLE146 OFTHECONSTITUTION AMERICANTELEPHONE AND TELEGRAPH, C O M P A N Y O F U S A ·. Applicant. ν T H E REGISTRAR OF TRADE MARKS, Respondent {Case N o 981/85} Trade marks — Registrability of proposed word — Judicial control — Principles applicable Trademarks— Meaning ofproposed word—Permissible tolook atdictionanes in order to find it Trade marks — Distinctiveness — The Trade Marks Law, Cap 268, sections 11(l)(e), 11
(2)and 11{3) — Meaning of 'Inherent distinctiveness»— Review ofauthonties — Trademark adaptedto distinguish byreasonof itsuse— Use doesnot make amark distinctive, if theinherent unsuitabihty ofsuchmarksis so strong thatno degree of distinctivenesscanin factcounterbalance it 5 Trade marks — Distinctiveness — Registration in foreign countnes — Of limited significance \Q Applicant'sapplicationforregistrationoftheword«TELEPLAN»asatrade mark inPart A, Class9of theRegister ofTrade Markswas turneddown bythe Registrar ofTrade Marks on the groundthat the proposedmark contravened theprovisions ofsection l l ( l ) { d ) o f theTrade Marks Law, Cap 268,mthatit had direct reference to the character or quality of the goods and it lacked distinctiveness and also that it contravened the provisions of section 13 asit was likely to deceive or cause confusion 15 Hence thisrecourse Held dismissing the recourse
(1)This Court cannot interfere with the discretionof the Registrar once the subjudice decision was reasonably open to htmand properly taken 196' 20 3 C.L.R. 5 10 American Telephon Co.v.Reg.ofTrade M a r k ·
(2)Itissettledthat lookingatdictionanes to findthe meaning ofawordis an acceptedpracticeinlaw. TheRegistrar was nghtin lookingatdictionanes in order to find the meaning of«TELEPLAN·. The word «tele»originating from theGreek word «τηλε» isa well known andwidely used word and is commonly usedasacombiningformprefix to indicate,inter alia,distant,ata distance orover a distance.The word «plan» bears also aclear meaning,it means plan,draftplan,programmeormethodofachieving something,away of carrying outa design, device. The combination ofthese twowordscan easily lead to theimpression thatthegoodssoughttoberegistered underthis trade mark are inthe nature ofmatenal foruseinatelecommunications plan or partthereof
(3)The interpretationofthe word «distinctive»appeanng insub-section
(1)of section 11 isgiven under subsection
(2)ofthe same section.Relevant, is, also, sub-section
(3)ofsection 11 15 20
(4)Inthis case the applicant hasfailed todischarge the burden ofproving thattheusemadeinCypruswas suchthatinthecircumstances, theproposed mark isin factadapted to distinguish.
(5)In the light of the authorities as regards themeaning of «inherent distinctiveness» the word TELEPLAN cannot be considered as«inherently distinctive».
(6)Thefactthat the proposedword has been registeredasatrademarkin other countriesisofasecondary significance Recourse dismissed Costs in favour ofrespondents 25 Casesreferredto: Societe Nationale Elf Acquitaine v. The RegistrarofTrade Marks
(1987)3 C.L.R. 1420; l.W.S. Nominee Co. Ltd.v. The Republic
(1967)3C.L.R.582. Merck v. TheRepublic
(1972)3C L.R. 548, 30 Yorkshire Copper Works Limited sApplication (1954} 71 R.P.C. 150; RegistrarofTradeMarks v. Wand CDu CrosLtd. [1913]A.C. 624; · Perfection Soap case [1909] 26R.P.C.837; Peletico v.Registrarof TradeMarks
(1986)3C.L.R.
- Needle-Tip TradeMark [1973]R.P.C.
- 1967 * AmericanTdcphonCo.v.Reg.ofTrad·Mark*
(1987)Recourse. Recourse against the refusal of the respondent to register the word «TELEPLAN» in part A, Class 9 of the Register of Trade Marksinrespectofprintedmattersrelatedto telecommunications equipment. Chr. Theodoulou, forthe applicant St. Ioannides, for the respondent. Cur.adv. vult. SAWIDES J. read the following judgment. The applicant, a company incorporated in U.S.A., submitted an application dated 10 the 28th September, 1984, for the registration of the word «TELEPLAN»written inplaincapitallettersasatrademarkinPart A, Class 9 of the Register of Trade Marks in respect of telecommunications equipment. The application having been considered by the respondent was on the 24th October, 1984, 15 objected to on the ground that the proposed mark contravened the provisions of section ll(l)(d) of the Trade Marks Law, Cap. 268,inthatithaddirectreference tothecharacterorqualityofthe goodsand itlackeddistinctivenessandalsothatitcontravened the provisions of section 13 as it was likely to deceive or cause 20 confusion. Theapplicant on 14.3.1985applied, through itsadvocate, fora hearing which in fact was held on 19.9.1985. After hearing the arguments raised by counsel for the applicant on the objections raised bytherespondent againstthe registration ofthesaidmark, 25 therespondentreachedhisdecisionwhichwascommunicated to the applicant by letter dated 11th October, 1985, whereby he dismissed theapplication, confirming his objections. Asa result, the applicantfiled the present recourse challenging thesubjudicedecisionandprayingforitsannulment. 30 Byhiswritten address counsel for applicant expounded on his groundsoflawandrejectedthecontention oftheRegistrarthatthe mark in question has immediate or indeed any relation with the character or quality of the goods or that it lacks distinctiveness. Even if itwere so, counsel submitted, there isevidence of use in 35 Cyprussince 1978,aswellasadvertisement inCyprus,according to the affidavits of G.E. Murphy dated 9.8.1985 and of Miss YiannoullaTheophanousdated 14.9.1985.Hefurther contended that the decision of the Registrar was not duly reasoned, that he 1968 5 3 C.L.R. American Telephon C o .v . R e g .ofTrade Mark» S a w l d e s J . misdirected himself and/or proceeded on wrong principles in arrivingathisdecision and that hedidnottake intoaccount allthe factsofthecase.\Counsel concluded hisaddressbysubmittingthat when thereisanappeal totheCourtfrom theRegistrar'sdecision, 5 suchappealisbywayofrehearingandtheCourtisfree toexercise its own discretion on the matter irrespective of the decision reached bythe Registrar. Counsel fortherespondent byherwrittenaddressinsupportof the decision of the Registrar contended that the word 10 «TELEPLAN» has direct reference to the character and qualityof the goods for which it is sought to be registered, as the word «TELEPLAN» consists of the word «tele» which, according to the dictionaneshasthemeaningof«faroff»andtheword«plan»which hasthe clear grammatical meaning of device orprogramme. She 15 made reference inthisrespecttodictionariesexplaining the prefix «tele»and the word «plan»,the meaning of which, she submitted, isthat the goodsare telecommunication's plan orpart of it. She submitted that the trade mark in question is in no way inherently adapted to distinguish, and the evidence adduced by 20 the applicant, ascontained inthe affidavits filed on itsbehalf, that thetrade markwasinuse inCyprusand had been used inrespect of goods manufactured by it, at the Hilton and Ledra hotels in Nicosia, isnot sufficient to establish use. Counsel also contended that the objection raised bythe respondent on section 13that the 25 proposed mark would be highly deceptive and confusing was a reasonable one as the use of the said words may suggestthat the goods concerned possess certain qualities (i.e. that they are a telecommunications plan) which qualities have not been proved. She further contested thesubmission ofcounsel forapplicant that 30 this Court can deal with the case as a case for retrial and can substitute its own discretion to that of the Registrar, as being entirely wrong and contrary to our case law, and concluded by submittingthatthesubjudicedecisionwasreasonably open tothe Registrar. 35 Before proceeding todealwiththemainquestion, Ishall briefly disposeofthequestionraisedbycounselforapplicant concerning the approach of this Court in dealing with a recourse against a decision of the Registrar of Trade Marks. The same submission was made by the same counsel in Case No. 365/84 (Sociuta 40 Nationale ElfAcquitaine v. TheRegistrarof TradeMarks)inwhich 1969 SavvidesJ . AmericanTelephonCo.v.Reg.ofTradeMarks
(1987)judgment was delivered by me on 7.10.1987 (to be reported in
(1987)3 C.L.R.)*. In that case Ihave held, following the case of I.W.S. Nominee Co. Ltd. and the Republic
(1967)3 C.L.R. 582 thatalthough the decisions of the Registrar were subject to an appeal to the Court 5 before 1960, after the Independence of Cyprus such decisions, being administrative acts, are subject to a recourse under Article 146 of the Constitution and this Court cannot interfere with the discretion of the Registrar once the decision concerned was reasonably open to him and properly taken. 10 Ifully adopt, for the purposes ofthisrecourse, what I have said in the above case, regarding this submission of counsel for applicant. Iwillnow proceed tothesubstance of the case. Counsel for applicant sought to rely on two affidavits which 15 were before the Registrarat the hearing of the case. The first is an affidavit sworn on the 9th August, 1985, by the Trade Mark and Copyright Counsel ofthe applicant, namely, Mr. G.E. Murphy, to the effect that the trade mark «TELEPLAN» had been registered in Austria, Benelux, France, Kenya, Monaco, 20 Paraguay, Peru and Tunisia and there were pending applications for its registration in a number of other countries including Great Britain. Also, that the products inquestion «are known in Cyprus and have been used and soldinCyprussince 1978»and are used by the Hilton and Ledra hotels in Nicosia. It is also alleged that 25 such goods areadvertised inCyprus.Inpara.5ofthesaid affidavit itisadmitted that «salesfigures are unavailable». The second affidavit isdated 14th September, 1985 and was sworn by Yianoula Theophanous, a clerk in the law office of counsel for applicant, inwhich reference ismade tothe contents 30 of the previous affidavit and to which various brochures were attached which,accordingtotheallegationoftheaffiant, showuse and advertisement of thegoods in Cyprus. Ihad the opportunity of examiningsuch brochures, which also appear inthefileof the Registrar(exhibit 1),butIcouldnotderive 35 fromthemanyassistanceastothetradeuseandextentofsuchuse inCyprus,ofthegoodsoftheapplicantandwiththetrademarkin question. 'Reportedin
(1987)3C.L.R. 1420. 1970 3C.L.R. AmericanTelephonCo.v.Reg.offTradeMark· SawldesJ. Further evidence was adduced by counsel for applicant at the heanng, consisting of two affidavits, the first sworn by the same affiant, Mr Murphy, on the 15th January, 1987 which contains mainly legal arguments which have already been advanced by £ counsel and of a repetition of the allegations in his previous affidavit as tothe use of the goods by Ledra and Hiltonhotels Thesecond affidavit issworn by AHj. Loizou,aclerkof counsel for applicant and is dated the 30th January, 1987 It is stated therein thattheapplicantisa graduate of a secondary school and 10 thatby looking atandheanngtheword «TELEPLAN»shebelieves that it has no relation to the character or quality of the goods sought tobe covered by thesubject mattertrade mark Iwish to state, at this stage, however, that the opinion of this advocate's clerk, a graduate of the Gymnasium, by itself,cannot 15 have any weight inthedeterminationof thiscase inthelight ofthe legal arguments and cannotoverweigh the opinion expressed by the Registrar inthis respect The first question raised by the Registrar onthe registrability of the trade mark in question, is based on section ll(l)(d) of the 20 Trade Marks Law, Cap. 268 and its subsequent amendments,in that the suggested name has direct reference to the character or quality of the goods Counselfor applicantobjected totheway inwhichthe Registrar reached his conclusion by making use and reference to well 25 known dictionaries It is well settled, however, that looking at dictionanestofind the meaning of a word, isanaccepted practice inlaw (E Merc/tv./?epu6//c
(1972)3C LR 548 atpp. 562,563) The word «tele» onginating from the Greek word «τηλε» is a well known and widely used word and is commonly used as a 30 combining form prefix to indicate,interaha, distant,ata distance orover adistance Theword «plan»bears alsoaclearmeaningand accordingtothedictionanes,towhich reference was madebythe Registrar, it means plan, draft plan, programme or method of achieving something, a way of carrying out a design, device. The 35 combination of these two words can easily lead tothe impression thatthegoods sought tobe registered underthistrademarkarein thenatureof materialfor useinatelecommunicationsplanorpart thereof and it was reasonably open to the Registrar to reach the 1971 S a w l d e s «I. American Telephon Co.v.Reg. of Trade Marks
(1987)conclusion that the combined word «TELEPLAN» has direct reference tothe character orquality of the goods. Another objection raised bythe Registraristhat the trade mark inquestion lacksdistinctiveness contrary tosection 11
(1)(e/of the Trade Marks Law. 5 Section ll(l)(e) ofCap. 268 provides as follows: «11
(1)Inorder foratrade marktobe registrableinPartAof the register, it must contain or consist of at least one of the following essential particulars: (
- a)(
- b)(0 10 (
- d)(e)any other distinctive mark but a name, signature, or woru or words,otherthansuch asfallwithinthedescriptionsinthe 15 foregoing paragraphs (a), (b), (
- c)and (d), shall not be registrable undertheprovisionsofthisparagraph except upon evidence of its distinctiveness.» The interpretation of the word «distinctive» appearing in subsection
(1)ofsection 11isgiven under sub-section
(2)ofthesame 20 section as follows: «
(2)For the purposes of this section 'distinctive' means adapted, inrelation togoods inrespect ofwhich atrade mark .isregistered orproposed toberegistered,todistinguish goods with which the proprietor of the trade mark is or may be 25 connected in the course of trade from goods in the case of which no such connection subsists ...» It is farther provided under sub section 3 of section 11 as follows:«In determining whether a trade mark is adapted to 30 distinguish as aforesaid the Registrar may have regard to the extent to which (a) the trade mark is inherently adapted to distinguish as aforesaid;and (b)by reason of theuse of the trade markorof any other 35 circumstances, thetrade markisinfact adapted to distinguish as aforesaid.» 1972 3C.L.R. AmericanTelephon Co.v. Reg.ofTradeMark· S a w i d e a J . Applicant's counseltriedtoprove byfilingaffidavit evidencethat the mark in question qualifies for registration as being distinctive since it has been used in Cyprus Though the applicant allegesin those affidavits that the goods in question had been used oy the Hilton and Ledra hotels Ltd ,itwas notinaposition tosupply the Registrar withanyyearlysalefigures astothequantityof the goods sold Theapplicant has therefore failed todischarge theburdenof proving that the use made in Cyprus was such that in the circumstances,theproposed mark isinfactadaptedto distinguish 10 Even ifevidence ofuse isestablished, such evidence does not makeatrade mark distinctive enough toenable ittobe registered iftheinherentunsuitability ofsuch mark isso strong thatno degree of distinctiveness infact can counterbalanceit InKerly's Law ofTradeMarksandTradeNames 12th Editionat 15 pp 100 - 101, paragraph 8-43 under theheading «Inherent distinctiveness» we read the following 20 25 30 35 «To beinherently adapted to distinguish, aword mustbe one which, as aword, isadaptedtodistinguish thegoods, and not a word which mayby user acquire thecapacity of distinguishing the goods 'The Act means that atrader may takeaword which from something inthe word itself - say the fact thatnoone had ever heard theword before, thatitwas an invented word, orthat it indicated the particular traderas distinguished from anothertrader,butalwaysfrom something found intheword itself asdistinguished from theway inwhich itisused - issuchastoanwer thedescnptionofbeing adapted to distinguish the goods *'By'inherently adapted',** Itake theAct tomeanadapted of itself,standing on itsown feet' The House of Lords hasadopted a somewhat different approach,which seems moreappropnatetotheevaluation of the factor ofinherentdistinctiveness incases ofmarks shown to be distinctive in fact*** 'However, long before the reference to inherent adaptability hadbeen incorporated in the current statutes dealing with trade marks, ithad been held upon grounds of public policy thatatraderought nottobe allowed toobtain by -Lassellall9i0}2(h "PerHarmanL '40 2?RPC 453 J <n Weldmeah119661RPC 220α!ρ 228 "•Per LordDiplocktn Smith. KlineandFrench (1976]RPC 511 at538 1973 Savvtde·J. AmericanTelephonCo.v.Reg.offTradeMark·
(1987)registration under the Trade Marks Act a monopoly in what other traders may legitimately desire to use. The classic statement of thisdoctrine istobe found inthe speech ofLord Parker intheW.&G.Case [1913]30 R.P.C.660atpage 672 where he said that the right to registration should largely 5 depend on whether other traders are likely, in the ordinary course of their businessand without any improper motive, to desireto usethe same mark, orsome mark nearly resembling it,upon orinconnection with theirowngoods The reference to'inherentlyadapted' insection9
(3)oftheConsolidation Act 10 of 1938, which was first enacted in 1937. has always been treated as giving statutory expression to the doctrine as previously stated byLord Parker.' Thus the mere proof or admission that a mark does in fact distinguish doesnotipsofactocompelthejudgetodeem that 15 mark to be distinctive. It must further be adapted to distinguish', whichbringswithinthepurview of hisdiscretion the widerfield of the interestsof strangers and of the public.» Also,inparagraph8-41atp.99ofthesamebook,itreads: «...the Registrar, inconsideringan application toregistera 20 mark, mustconsiderbothitsinherent adaptation (i.e.aptitute) to distinguish and also the extent to which it is shown by evidence (ifthere issuchevidence) tobe distinctive». In the case of Yorkshire Copper Works Limited's Application [1954] 71 R.P.C. 150,the House of Lords held that the Registrar 25 must by virtue of section 9
(3)(our section 11
(3)), consider both whetheramarkisinherentlyadapted todistinguish andwhetherit is in fact adapted to distinguish and that the mark «Yorkshire» which was in issue in that case, although in fact adapted to distinguish the Applicant's goods was inherently not adapted to 30 distinguish the goods of any trader, and the mark was not distinctive. In his opinion to the House, in the above case, Lord Cohen, atp. 157,adopted theobservations of Lord Parker in the W. & G case (Registrar of TradeMarks v.W&GDu Cros Ltd. [1913]A.C.624)where he said: 35 «But the tribunal isnot bound to allow registration evenif the mark be infact distinctive.Acommon lawmark isstillnot necessarily registrable. If the tribunal finds that a mark is anywhere, oramonganyclassofpeople,infact, distinctiveof the goodsoftheapplicant, itmaybe influenced bythisfact in 40 1974 3C.L.R. AmericanTelephonCo.v.Reg.ofTradeMark· SawldesJ. detenni img whether it is adapted tr,distinguish these goods ftoni those of olhei persons but distinctiveness in fact is not conclusive » 5 10 1ord( oh· η further quoted thefollowing piincipicas putby Sir Herbert Cozens-Hardy in the Perfection Soap case: [19091 26 R ΡC 837 «Wealthy tidders are habitualk, i*agei toenclose part of the great common of the English language and to exclude the general public of thepresent day andof thefuture from access tothe enclosure * and tothe observation of Farwell L.J in the same case that- 15 «'The Court is careful not to interfere with other persons' nghts further than is necessary for the protection of the claimant,and nottoallowany claimanttoobtain a monopoly further than isconsistent with reason and fair dealnig • '> The question of distinctiveness has been considered by this Court in a series of cases. In the recent decision of Peletico v. Registrar of Trade Marks
(1986)3 C.L.R. 490 the position is summansed as follows at p. 493: 20 25 30 «Distinctiveness is, as I had occasion topointoutinPlough Inc. v.Republic the hallmark of registrability aswellasthetest for determining the likelihood of deception or confusion under s. 13, Cap. 268. In Plough Inc. the Court refused registration of 'TROPICALBLEND'for lackof distinctiveness. Distinctiveness is ordinarily achieved by coining a word and making its use thereafter the property of the owner of the goods. Of course aword may becreatedwithimaginationand sound or look attractive as abrand name lorthegoods. What it must not be is descriptive of the goods, confusing or deceptive astotheongin.qualityandattnbutesofthegoods.» Counsel for applicant further argued thatthe mark is registered abroad in several countries. It is well established that foreign registrations areofsecondary significance. InKerly's Law ofTrade Marksand Trade Names(supra)atp. 123, underparagraph 8-67, 35 we read: «Use orregistration abroad On an application to register a mark for use in theUnited Kingdom, itisdistinctiveness intheUnitedKingdom thatisin 1975 S a w l d e s J. AmericanTelephon Co. v. Reg. of Trade Marks
(1987)question. Thus extent of registration and use of the mark abroad are of secondary significance, if any». As totheposition when amark has been registered ina foreign country and the bearing of such registration in proceedings for registration in Cyprus, as well as whether the mark is capable of 5 distinguishing the goods of the applicant in this country. I wish to refer to the judgment Idelivered in the case of Societe Nationale ElfAcquitaine (supra)inwhich reference ismadetothedecision in Needle-Tip TradeMark[19731R.P.C. 113 and,inparticular,tothe following: «It seems to me that the mere fact that a mark has been registered in a foreign country has little or no bearing on whether themark iscapable of distinguishing thegoods of the applicant in this country. Registration in the foreign country wilt have been allowed according to the law and practice in 15 that country which may differ from that of this country and may have beenallowed inthelightofparticularcircumstances and tradingconditionsinthatcountry and which may be very different to those obtaining inthiscountry. Itmay be that,ina case where a mark applied for here has already been 20 registered inaforeign countrywithasystem of trademark law similar toour own, if a written decision of theforeign tribunal allowingregistration intheforeign countryandwhich showed the grounds of the decision and the matters taken into consideration were to be adduced on the application here, it 25 might be persuasive as apiece of reasoning as towhether the mark should be registered here, if but only if, similar considerations applied inthiscountry;butthat,itseems tome is as far as registration in a foreign country could be relevant to registrability here. It is to be noted that in Swifts' case 30 theDivisional Courtwas influenced by whatwas referred toas 'a scholarly and persuasive judgment of the Full Court of the High Courtof Australia'. On thepresent appeal, however, all thathasbeen relied uponisthemere fact of registration inthe countries mentioned and that mere fact, as I have already 35 stated, isof littleornobearing onwhetherthemarkis capable of distinguishing the applicants' goods inthis country». In the present case on the material before me and having carefully considered the contents of the decision of the Registrar and the reasons for his objections, I have come tothe conclusion 40 107Λ 10 3 C.L.R. AmericanTelephon Co.v. Reg. offTrade Mark· S a w l d e a J . that it was reasonably open to him to decide against the registrability of the trade mark in question relying on sections 11 and 13of the Law. Bearing in mind the well established principles that the trial 5 Court does notinterfere with decisionsofan administrative organ nordoesitsubstituteitsowndiscretion tothatofthe administrative organ if the decision challenged was reasonably open to such organ, I have reached the conclusion that the applicant has failed to show a good cause for interference with the Registrar's 10 decision. Intheresult,therecoursefailsandisherebydismissedwithcosts infavour ofthe respondent. Recourse dismissed with costsinfavour of respondents. 1977