(1987)1987November 12 [PIKiS,J | INTHE MATTER OF ARTICLE 146 OF THE CONSTITUTION PLAYBOY BOUTIQUES LTD., Applicants. v. THE OFFICIAL RECEIVER AND REGISTRAR OF TRADEMARKS, Respondent. (Case No. 143/87). Trade marks — Filing opposition to regis.:_;.w,i not accompanied by proper authorisation—Inthecircumstances theIrregularityisnotmaterial. Trademarks—Filing written addressinsupportofopposition toregistration after expirationofrelevanttimelimit—Anon materialirregularity. Delayinissuingadministrativedecision—Omissiontocomply withArt. 29 ofthe Constitution not made the subject of aseparate recourse— The omission ceasestobejusticiableaftertheissueofthedecisionappliedfor. Trademarks—ProceedingsbeforetheRegistrar—Advocate ofone oftheparties filingaffidavit as a witness — Difference between such proceedings and judicialproceedings —Theproceedings beforetheRegistrararenotnullified byreasonofsuchafact. 5 10 Evidence — Hearsay evidence — The relevantrule isnot applicableassuchIn administrative proceedings or in judicial proceedings reviewing administrative action — The weight to be attached to such evidence Isa differentmatter. 1*•> Due inquiry — Change of the person holding the office of the single organ concerned — WhetherInquiryshouldbegindenovo—Question determined inthenegative—A differentruleappliesincaseofchangeinthe composition ofacollectiveorgan. The Registrar of Trade Marks dismissed applicants' application for reparation of a trade mark, on the ground that the use of the mark by the 2062 20 3C.L.R. Playboy v. Official R«c«tv*r applicant» may cause confusion (Section 13of Cap. 268},because there was Λreal likelihood that the purchasing public mightmistake the productsofthe applicants for those of the interested parties, who. however, had not registeredthemark underwhich theyhandedtheirown products,which were marketed in Cyprus. The Registrar cametothatconclusiononaconsiderationof(a)thesimilarity oridentity between thetwomarks,(b) evidence ofpriorandlongeruserofthe mark by the interested parties,and (c)evidence of knowledge on the partof theapplicantsoftheuseofthemarkoftheproductsoftheinterestedparties. Ir> Th* decision of the Registrar ischallenged by this recourse on procedural grounds, ι e. that the interested parties raised an opposition without simultaneously filing proper authonsation from their principals, that the interested parties were allowed to file their written address at the heanng before the Registrar after the time limitedforitssubmission,that the Registrar delayed to it-sue the decision afterthe conclusion of thehearing,that counsel (or the interested parties swore an affidavit to fact while an advocate 'n the case, that the content of the said affidavit of counsel was based on hearsay evidence, and that the official who dealt with the application for registration in its initial stages,namely. Mr.Constantinides.was replacedby hissuccessor Mrs. Kynacou. Held, dismissing therecourse:ί1) There isno substance asregardsthefirst two complaints. The excuse of the irregulanties did not cause irreparable i.-iiage
(2)The delay in issuing the sub judice decision had no beanng on the decision given nor didthe delay alter in any way the corrplexion of the case of the parties. Unless omission to comply with the provisions of Ar* 29 is made thesubjectofaseparate recourse, itceasestobejusticiableassuchafter the issueof the decision appliedfor ΐ()
(3)The inclusion oftrademark registrationinthedefinitionoflegalpractice does not assimilate proceedingsbeforethe Registrar andthe Court.
(4)The hearsay rule has no application as such in administrative proceedings Of course, the cogency of testimony and the weight to be attached to it by the fact finding body are invariably interwoven with the source and origin of knowledge and the likelihood of mistakes occumng on ^r, dQ account of lack of personal knowledge or in the process of repetition
(5)The registrationoftrade marksisentrustedtotheKegistrar.The manner of exercise of the power is always subject to scrutiny with a view to ascertaining the adequacy oftheinquiry andthe framework within which the power was exercised. In this case the directions originally given by Mr. Constantinides were designed to elicit the position of the parties in accordance with the Trade Mark Rules governing theexercise of the power. The inquiry was continued by the successor of Mr. Constantinides, again in 2063 Playboy v.Official Receiver
(1987)accordance with the rules. The ultimate decision was founded on due consideration of the material placed before the Registrar, including the material emergingfrom the directions given by Mr.Constantinides. The final decision cannot be faulted for failure totake intoaccount material relevantto the inquiry or for excessorabuse of power. 5 Recoursedismissed. No orderas tocosts. Casesreferredto: Granada v. Republic
(1985)3 C.L.R. 207; Erotocritou ν Soutsos
(1965)1C.L.R. 162; 10 InRe Efthymiou
(1987)1C.L.R. 329; /.W.S.Nominee Co. Lid.v. The Republic
(1967)3C.L.R.582; Merck v. Republic
(1972)3 C.LR. 548; Co. CarloElbav.Republic
(1977)3 C.L.R. 427; Kontemeniotis v. C.B.C.
(1982)3 C.LR. 1027; 15 Five Bus TourLtd. v. Republic
(1983)3 C.L.R.
- Recourse. Recourse against thedismissalofapplicant'sapplication forthe registration of the rabbitheadwithin aparticularframe inRegister A under classification 25 in respect of clothing and footwear 20 products. C.Hadjinicotaov, for the applicants. L.Koursoumba (Mrs.), for therespondent. A. Poetis, for theinterested parties. Cur.adv.vult. 25 PIKISJ.read thefollowingjudgment. Therabbit headwithina particularframe isthe markof theproductsofPlayboy Enterprises Incorporated, an American Corporation trading in the manufacture and sale of clothes, footwear andrelated products. Although theirproductsweremarketedinCyprustoo,theydidnot 30 register themarkunderwhichtheybrandedtheirproducts;amark denotingtheirorigin andmake. 2064 3 C.L.R. Playboy v. Official Receiver Plki· J The applicants are a Cyprus company, namely, Playboy Boutiques Ltd.. trading in the sale of clothes and footwear. They applied for the registration of the rabbit head in a similar or identical device as their own mark, seeking its registration in Register Ά* underClassification 25.theclassfor theregistration of marks associated with clothing and footwear products. The interested parties opposed the application as a measure for the protection of their interest in the use of the mark, claiming prior and longer user of the marknotonly abroad butinCyprus aswell. After hearing the parties and considering the affidavit evidence adduced on theirbehalf, throwing light on the similarity between thetwo marks, user of the marks andcircumstancesoftrading,the Registrar dismissed the application invirtue of theprovisions of s. 13 of theTrade MarksLaw, Cap.
- The use of themarkby the applicantswas likelytocause deceptionandconfusion, according tothedecision of the Registrar, among asubstantial section of the purchasing publicastotheoriginoftheproductsoftheapplicants. There was, as can be inferred from the decision, a real likelihood that the purchasing public might mistake the products of the applicants for those of the interested parties. The interest of Playboy Enterprises Incorporated to oppose the application cannot be doubted. Who qualifies as an aggrievedperson for the purpose of opposing an application to register a trade mark, was the subject of discussion and analysis in Granada v. Republic*. The same decision also illuminates the question of the likelihood of deception or confusion arising from the use of a similar or identical mark. The Registrar came to that conclusion on a consideration of (a) the similarity of identity between the two marks, (b) evidence of prior and longer user of the mark by the interestedparties,and(c)evidence ofknowledge onthepartofthe applicants of the use of the rabbit head device as the mark of the productsof the interested parties. In fact, affidavit evidence adduced before the Registrar suggested that not only applicants were aware of the fact that interested parties branded theirproductswith therabbit head,but also passed on occasion their products as those of the interested parties. Other evidence relevant to this issue supported that applicants themselves sold products of the interested parties at their shops. '
(1987)3 C.LR.
- 2065 Piki»J . Playboy v.Official Receiver (198.") The findings of the Registrar made his decision inevitable, whereas the similarity between the two marks made deceprior and confusion as to the origin of the goods of the two traders virtually unavoidable. Applicants made little, if any, effort t( pursuade theCourtthatthetwomarksareanythingthan similaror 5 that it was reasonably open to the Registrar to conclude on the materialadduced attheinquirythattheinterestedpartieshad prior and longer userof themark intheCyprusmarket.They challenge the propriety of the decision primarily on procedural grounds renderingintheirsubmissionthedecisionabortiveandvulnerable 10 to be set aside for gross irregularity in the conduct of the proceedings. Thefirst objection ofthe applicantsisthatthe interested parties raised an opposition without simultaneously filing proper authorisation from theirprincipalsasrequired bytheTradeMarks 15 Rules. It is an admitted fact that they were juilty of a similar omission too remedied bythesubsequent filing byboth partiesof the necessary authorization. Another procedural irregularity of which they complain isthat theinterested partieswereallowed to file their written address at the hearing before the Registrar after 20 the time limited for itssubmission. Thisfailure toowasexcusedin exercise of the power vested in the Registrar by Rule 93 of the Trade MarksRules allowing an extension of the time limitsset by the rules for the taking of relevant procedural steps. I find no substance in either of these two complaints. The excuse of the 25 irregularities did not cause anything in the nature of irreparable damage tothe interestsofthe applicants.Equally inconsequential to the substance of the case was the delay to issue the decision after the conclusion of the hearing before the Registrar. Whereas thedecision wasreservedon 28th November, 1985,itwasissued 30 on 23rd January,
- No doubt the delay is deplorable and defiestheruleofsoundadministration andtheprinciple enshrined inArt.29oftheConstitution. Butithad nobearingonthedecision givennordidthedelayalterinanywaythecomplexionofthecase 35 of the parties. Unless omission to comply with the provisions of Art. 29 ismade the subject of aseparate recourse, itceasesto be justiciable assuch after the issueof the decision applied for. Two other complaints relate to the handling of the case of the interested parties by their counsel, namely, A. Poetis and the > advocate who replaced him S. Poetis (Mrs.). The fact that Mr. Poetis swore an affidavit to fact while an advocate in the case, 2066 3 C.L.R. Playboy v. Official Receiver Pikla J . made the proceedings a nullity. Mrs. Koursoumba for her part while acknowledging that registration of trade marks and steps associated therewith areaspeciesofadvocacyinaccordancewith s.11(i)and(ii)ofme AdvocatesLaw,shearguedthatthetestimony •' ofan advocate inthe causedoes nothave theeffect suggested by counsel fortheapplicantsandsheinvoked theobservationsofthe Court in Erotocritou v. Soutsos* in support of her position. With due respect, I feel the analogy between judicial proceedings to which the observations of the Court in the above case were 10 directed and proceedings before the Registrar is inappropriate. The inclusion of trade mark registration in the definition of legal practice does not assimilate proceedingsbefore the Registrar and the Court. Allitaccomplishes istoprohibit anyone other than an advocate from acting in a representative capacity for anyone 15 seeking or opposing registration of trade marks. Proceedings before theRegistrarareofanadministrativenatureandassuchare of a different character from judicial proceedings, the conduct of which is governed by the provisions of Art. 30.2 of the Constitution.VeryrecentlyIhadoccasiontoreviewinsomedetail MO the implications of Art. 30.2 leading me to the conclusion that there isincompatibility between the capacity of an advocate and that of a witness**. Bydrawing attention to differences between the two proceedings, Ido not in any way wish to encourage the practice of advocates ever acting in a dual capacity in any 25 proceedings. An advocate's position inany cause or matter is, to mycomprehension, necessarily compromised on every occasion when he becomes a witness inthe cause too.The cogency of his representational endeavoursisnecessarilyweakened. Bethatasit may, it does not have the effect of nullifying administrative proceedings. Furthermore, in this case counsel withdrew and another advocate assumed responsibility in his place. That no specificauthorization wassubmittedforhissuccessorisamatterof no consequence in the absence of any indication that the principalshadnotproperlyinstructedthesuccessortoacton their 35 behalf. Also objection is taken to the content of the affidavit of Mr. Poetis based on hearsay evidence. The hearsay rule has no application as such to administrative proceedings, nor for that •
(1965)1C.LR. 162. '•InrePaniccoeEiUiymlou,
(1987)1 C.LR.
- 2067 PSkteJ . Playboy «·Official Receiver <1»87) matter in proceedings of judicial review of administrative action Of course,thecogencyoftestimonyandtheweighttobeattached to it by the fact finding body are invariably interwoven with the source and origin of knowledge and the likelihood of mistakes occurring on account of lack of personal knowledge or in the 5 process of repetition. Be that as it may in the present case the Registrar was satisfied, as it appears from his decision, that the affidavit evidence of Mr. Poetis was corroborated by direct evidence coming from another deponent. Viewing the material before the Registrar initsentirety, it cannotbedeniedthatitwas, 10 at the least, reasonably open to the Registrar to find similarity between the two marks,prior andlonger user of themarkby the interestedpartiesandatruelikelihoodofdeceptionandconfusion arisingfromtheregistration of the mark. Thevalidity oftheproceedings isalsoimpugnedonaccount of 15 the replacement of the official who uealt with the application for registration in its initial stages, namely, Mr. Constantinides, with hissuccessor Mrs. Kyriacou. Counsel for theapplicant made two points: First, proceedings ought to have commenced de novo before the successor of Mr. Constantinides drawing an analogy 20 with iudicial rjroceedinqs. Second,changesinthecomposition of the organ that tried the application rendered the proceedings defective in much thesameway that continuation of proceedings before analteredcomposition of acollective organ renders them defective.Whereas counselfor theapplicant acknowledges inhis 25 address differences between single person organs and collective organs he overlooked in raising his final submission, the differences between the principles that govern the functioning of thetwo organs,particularly therelatively impersonalcharacter of the exercise of the power vested in a single official heading a 30 government department. The distinction between single person andcollectiveorgansisdulynotedbycounselforthe respondents andarticulatedbyreferencetoanumber ofworksontheexercise ofdifferent speciesof administrative authority*. *Dagto&ou•GeneralAdministrativeLaw1977,p.
- SpyBotopotdos•ManualofAdministrativeLow,2ndEd, p.123etseq. Stasstnopube-LesionsofAdministrativeLaw, 1957.pp. 142.
- Papmhadfe-SystemofAdministrativeLawApplicableinGreece, 6thEd., Vol.I, pp.
- 2068 3 C.L.R. Playboy v. Official Receiver PlktoJ . In accordance with the provisions of Trade Marks Law registration of trade marks is entrusted to the Registrar who assumes ultimate responsibility for the exercise ot the power vested in him by law. The manner of exercise of the power is 5 alwayssubject toscrutiny with aviewtoascertaining theadequacy of the inquiry and the framework within which the power was exercised. Carrying out this exercise in the present case reveals that the directions originally given by Mr. Constantinides were designed toelicittheposition of theparties inaccordancewiththe 10 Trade Mark Rules governing the exercise of the power. The inquiry was continued by the successor of Mr. Constantinides, again in accordance with the rules, whereas the ultimate decision was founded on due consideration of the material placed before the Registrar, including the material emerging from thedirections 15 given by Mr.Constantinides.Thefinaldecision cannotbe faulted for failure to take intoaccountmaterial relevant tothe inquiry or for excess orabuse of power. 20 25 30 Faint suggestions of breach oi the rules of natural justice are mostly founded on a false analogy between proceedings before the Registrar on the one hand and judicial proceedings on the other. Proceedings under the Trade Marks Law, Cap.268, are of an administrative character notwithstanding their semblance to judicial proceedings. This has been acknowledged time and again*. Furthermore, the rules of natural justice are invariably related to the subject of the inquiry and do notfind application in administrative action in the same way as they do in judicial proceedings**. To conclude, not only Ifind no ground for interfering with the decision of the Registrar, but I regard itas inevitable inviewofthe similarity of thetwo marksandcircumstancesoftradingof the two parties. •See,Interalia,I.W.S.Nominee Co.Ltd. v. TheRepublic
(1967)3C.LR 582,atpp S86-S87. Merck v.Republic
(1972)3 C.LR. 548. Co. CarhErbav. Republic
(1977)3 C.LR 427 · · See. Interaha,Kontemeniotls v. C.B.C
(1982)3 C.LR. 1027 (F.B.)FiveBus TourLtd ν Republic
(1983)3 C.LR. 793. 2069 Kourris J . Playboy v.Official Receiver
(1987)In the end the application is dismissed. The decision is confirmed pursuant to the provisions of Art. 146.4(a) of the Constitution. No order astocosts. Application dismissed. No order astocosts. 2070