(1987){VWVIUiS IN T H E MATTFR OF ARTICLF 146 OF T H F C O N S T I T U T I O N A M E R I C A N TELEPHONE A N D T F l K > K A P H C O M P A N Y ΟΓ U b Λ Applicant ν T H E REGlbTRAR OF TRADE M A R K b Respondent (Case No 980/85} Trade marks — American Telephone and Telegraph Company
(1987)3 CLR 1966 adopted Applicant's application forregistration of the w,ord«TELrPLAN* in Part A Class 16 of the Register of I rade Marks in respect of r rinted matters related to telecommunicationsequipmentwas turneddown by the Registrar ofTrade 5 Marks on the grounds that the proposed mark has direct reference to the characterorquality ofthegoods (.uiitrary it> theprovisions ofsection 11
(1)(d) of Cap 268 that it i*> notdistinctive in accordancewith section 11
(1)(e) ofthe Trade Marks Law, and that itcontiavenes the provisions of section 13of the Trade Marks Law Cap 268 in that it islikely todeceive or cause confusion 10 Hence this recourse Held dismissing the recourse In the present case on the material before thisCourt beanng alsoinmindthereasonsgiveninAmencan Telephone and Telegraph Company ν Registrar of TradeMarks
(1987)3 C L.R 1966 and having carefully consideredthecontentsof thedecision of the Registrar and the reasons for his objection,this Court came to the conclusion that it was reasonably open to him to decide against the registrability of the trade mark in question Recourse dismissed Costs in favourofthe respondent 1978 15 20 3 C.L.R. American Telephone Co. v. Reg. of Trade Mark·
(1987)Case* letened to: Amencan Telephone and TL > ·•·> ·\: TheRegistraiotTttide Ma/*s
(1987)3C.L.R.19<* *TELECHECK* TradeMark[19861R.P.C.77 5 Recourse. Recourse against the refusal of the respondent to register the word «TELEPLAN» in Part A, Class 16 of the Register of Trade Marksinrespect of telecommunications equipment. 10 Chr.Theodoulou, fortheapplicants. St. hannides (Mrs), forthe respondent. Cur.adv. vult. SAWIDES. J. read the following judgment. The applicant, a company incorporatedinU.S.A..appliedonthe28th September. 1984 for the registration of the word «TELEPLAN» written in 15 capitallettersasatrademark inPartA,Class 16ofthe Registerof • Trade Marks in respect of printed matters related to telecommunications equipment. A similar application was submitted on the same day for the registration of the same trade mark in respect of telecommunications equipment. The 20 application havingbeenconsideredbytherespondentwas.onthe 24th October. 1984,objected toon the grounds that (a)the proposed mark has direct reference to the character or qualityofthe goods,contrary totheprovisionsofsection ll(l)(d) of Cap.268. ,25 (b)Itisnot distinctive inaccordance withsection 1l(l)(e)of the Trade MarksLaw. (c)Itcontravenestheprovisionsofsection 13oftheTradeMaks Law, Cap.268,inthat itislikelytodeceive orcause confusion. In support of his objection under (a), the Registrar made 30 reference to the meaning of the component words sought to be registered, «tele», and «plan», by reference to well known dictionaries and, in particular, to the Greek-English dictionary Odysseos,Hackh'sDictionaryandWebster'sDictionary.Pursuant to the provisions of Ke^uidtion 32 or the Trade MarksRules, the 35 applicantsapplied forahearing before theRegistrar,seeking fora review of hisdecision At the hearing before the Registrar which washeld on the 19thSeptember. 1985.affidavits were produced 1979 S a w i d e * J. American Telephone Co. v. Reg. of Trade Marks
(1987)on behalf of the applicants, to the effect that the trade mark in question had been registered in a number of countries and that there were pending applications for its registration in anumberof other countries, including GreatBritain.Also,thattheproductsin question are known inCyprus andhave been used and sold since 5 1978 by the Hiltonand Ledra Hotels in Nicosia andthatthey are advertised in Cyprus. Brochures were attached toone of the said affidavits in support of the contention about use and advertisement of the goods in Cyprus. Therespondentby hisdecision which was communicatedtothe 10 applicant by letter dated 14.10.1985 affirmed the objections previously raised by him. As a result, applicantfiledthe present recourse whereby he is challenging the sub judice decision and prays for itsannulment. The present case is related to Case No. 981/85 American 15 Telephone and Telegraph Company, ν The Registrarof Trade Marksconcerningregistration of thesame trademark inrespectof telecommunications equipment, in which judgment hasjust been delivered.*. Both applications were submitted totheRegistrar on the same day. The application in respect of telecommunications 20 equipment was filed by the Registrar under No.25528 and the application in the present case under the consecutive number
- Both applications present common questions of law and fact, the only difference between them being that the one was in 25 respect of telecommunicationsequipment and thepresent onein respect of printing materia! for such equipment. The two applications were heard by the Registrar on the same day and they were both refused on the same grounds. The material which was placed before theRegistrar atthehearing was 30 the same in respect of both applications. In fact, the affidavits produced inthepresent case and thebrochures attachedthereto are copies of the affidavits produced in Application 25528 (the subject matter of Recourse No. 981/85). Also, the arguments advanced at the hearing before the Registrar were in both cases 35 the same. Furthermore,the grounds of law raised in support of both recourses and thefacts related theretoareverbatim thesame. The same applies tothewritten addresses of counsel and no fresh arguments were advanced inthiscase otherthan those which had 7)3CLR \?b6 1980 3C.I.R. AmericanTelephoneCo.v.Reg.ofTradeNark· Sawide·J. already been advanced in Case No. 981/
- I therefore find it unnecessary to repeat the gist of their arguments, as same are explicitly mentioned in Case No. 981/85 and which I consider as forming part of thepresent case. 5 As totheobjection based onsection 1l(l)(d)of theTradeMarks Law concerningthedirectreference tothecharacterandqualityof the goods and the objection on the question of distinctiveness based ons. 1l(l)(e) theyhave bothbeen extensively dealtwith by me inCase No.981/85 (supra)andfor thepurposes of the present 10 case I adopt what I said inthatcase as applying mutatismutandis inthe present case. The word «tele» is a well known and widely used word and is commonly used as acomponentfomι prefix toindicate,interalia, distant,atadistanceorover adistance.Theword «plan»bears also 15 a clear meaning and according to the dictionaries to which reference was made by the Registrar, it means plan, draft plan, programme, a method of achieving something, a way of carrying out a design, device. The combination of these two words can easilylead totheimpression thatthegoods sought tobe registered 20 under this mark are in the nature of material for use in a tele communications plan or part thereof and in the circumstances, it was reasonably openfor theRegistrar toreachtheconclusionthat they lack distinctiveness, they have direct reference to the character or quality of the goods and thatthey are likely to cause 25 confusion undersection 13 of the Law. In addition to the various authorities reference to which was made by me in Case No. 981/85,1 find thatuseful reference may be made totherecentcase of *TELECHECK»TradeMark [1986] R.P.C.
- In his judgment Mr. R.A. Pittock, acting for the 30 Registrar, after having dealtwith thecleargrammatical meaningof the words «tele» and «check» went on as follows (p. 79 of the report): 35 40 «As I have said, the word 'TeleCheck' has a very direct meaning when used in connection with printed matter relating totelevision. Inaddition to indicating, for example, a listing of television programmes for use inchecking the details of certain programmes, if used in relation to a servicing manual or the like for television apparatus it very readily indicates the checks to be made, etc., of, for example, the various functions of the equipment. Furthermore, Mr. Wood 1981 S a w i d e · J . American Telephone C o . v.Reg.of Trade M a r k ·
(1987)advisedmethemarkisintendedforuseupongoodspnmanly relatedtoaservicewhich enablesacredit ratingtobe quickly and accurately checked by means of a remote operation. If used in relation to such goods Iam of the opinion the word 'TeleCheck' would, because of the common usage of the 5 combiningform prefix'tele*,bereadilyunderstoodtoindicate a remote (or distant) check, on credit ratings.Thus for these reasonsIconsiderthewordTeleCheck' isdirectly descriptive of acharacter of someof thegoods included within the claim of the application anddoes not qualify for registration under 10 paragraph (d)of section9
(1). With regard to the objection under section 9(1Me) it is necessary to decide whether or not themark asawhole, that isto say the word 'TeleCheck' combined with the geometric device, possesses the required distinctiveness within the 15 meaning of section 9
(2). In my view, it does not. The overwhelming featureofthemarkisthedescriptive combined words,not only becauseoftheirboldnessinthemarkbutalso because of the nondescript nature of the device. I have refrained from attempting to describe this device because of 20 thedifficulty Ifoundinframingasimpledescription of itandI am confident the public would havesimilardifficulty. For this reason I believe the descriptive combined words will undoubtedly be the feature of the mark by which it will be knownandreferredto.Iconsider,therefore,thattheimpactof 25 the device inthiscomposite mark isnotsufficient toimpart to the mark as a whole the required distinctiveness to overshadow theeffectofthedescriptivecombinedwordsand thus allow the mark, in its totality, to qualify for registration under section9(l)(e) of theAct.» 30 Onappeal itwasfound asfollows (atpp.80-81of the report): «Nocriticism wasmadeofpage2ofthedecisionandIagree with the conclusion that the word 'TeleCheck' is directly descriptive of a character of some of the goods included withintheapplication.WhetherornotMr.Watsoniscorrectin 35 hissubmission depends on impression and Iam not satisfied that he isright.ThewordTeleCheck* isvery prominent and without evidence to support the applicants' case, I do not consider that itwould berighttoconcludethatthe combined device and word is capable of distinguishing when used in 40 speechor when seen.Itherefore agreewith Mr. Pittock.» 1982 ΖC.L.R.American Telephone Co. v. Reg. of TradeMarksS a w i d e · J. In the present case, on the material before me. bearing also in mind thereasons given by me inmydecision inCase No. 981/85 and havingcarefully considered thecontentsof thedecision ofthe Registrar and the reasons for his objection. Ihave come to the 5 conclusionthatitwas reasonably opentohimtodecideagainstthe registrability of thetrademarkinquestion.Bearing inmindthatthb Court will notinterfere with the decision of the Registrar, norwill it substitute its own discretion to that of his, if such decision was reasonably open to him. Ihave reached the conclusion thatthe 10 applicant has failed toshow a good cause for interference by this Courtwiththe decisionof the Registrar. Intheresulttherecoursefails andishereby dismissed with costs in favour of therespondent. 15 Recoursedismissedwith costsin favour of respondent. 1983