clr/1987/1987_3_271.pdf

(1)There is nothingin respondent's reasoning showing thattheapplicants'said evidence was eithercontradicted or not true, nor does it appear that any inquiry was earned out as to the correctness of such evidence 15

(2)Thefailure tocarry out such an inquiry leads totheconclusion thatthe respondentmayhave been labounng underamisconceptionof fact As ithas been held in Foumia Ltd ν The Republic

(1983)3 CLR 262 a mere possibility of amisconception of fact isenough tovitiate a decision Subjudice decisionannulled Costsinfavour ofapplicants 20 Casesreferredto FoumiaLtd ν TheRepublic

(1983)3CLR 271 262 DunhUI Ltd. «. Reg. of Trade Marks

(1987)Recourses. Recourses against the refusal of the respondent to accept applicants' proposed marks 19947 and 19948 in respect of cigarettes inclass

1. G. Nicolaides, for the applicants. 5 St. Joannides(Mrs.), for therespondent. Cur. adv. vult DEMETRIADESJ.readthefollowingjudgment. Theabove two intituled recourses were heard together as both, in view of their nature, present common questions of law and fact. By them the 10 applicants challenge the decision of the respondent, dated the 13th December, 1980, by which he refused to accept registration of the applicants' proposed marks, Nos. 19947 and 19948, respectively, inrespect of cigarettes, inclass
2. The applicants are a company of limited liability, registered in 15 theUnitedKingdomandonthe20thAugust, 1979, theyappliedto the respondent for the registration in class 34 of Part A of the Register of Trade Marks,of the trade marks attached to their said applications. The proposed trade mark in Case No. 78/81 is a maroon coloured rectangular, rounded by a gold coloured frame 20 and bears No.
3. The proposed mark in Case No79/81 isa bigger rectangular, of the same shape and colours and bearsNo.
4. Thereisnoinscription whatsover onthetwo marks and as stated inparagraph (στ)of theapplications,theywereintendedto be limited tothe colours shown on the applications (maroonand 25 gold). By identical letters dated the 11th September, 1979, the respondent informed the applicants that their applications could not be accepted because the proposed marks lacked any distinctive character and there were, also, objections under 30 section 13 of theTrade Marks Law, Cap.
5. Section 13 of Cap. 268 provides:cltshall not be lawfulto registerasatrademarkorpartof a trademarkany matterthe use of whichwould,by reasonof its being likely to deceive or cause confusion or otherwise, be 35 disentitled to protection in a court of justice, or would be contraryto law or morality,or any scandalousdesign.» 272 3 C.L.R. DunhlllLtd.v. Reg.of Trade Mark· DemetriadesJ. Bythesaidlettersoftherespondent,theapplicantswerefurther informed thattheproposed marks could notberegistered unless evidence was produced that their use in Cyprus or other circumstances would give them distinctiveness. Theattention of 5 theapplicantswas also drawn totheprovisions ofsection 19

(3)of Cap. 268 which provides that their applications could be examined with ascope ofregistration underPartΒofthe Register and Regulation32, inaccordancewith which theycouldaskfora hearing,orsupply theRegistrar withawritten reply. 10 Asaresult,theapplicantsrequestedahearing,whichtookplace on the 11th November, 1980 andtherespondent,byletterdated the 13th December, 1980 informed them that his objections could notbe waived andthat the proposed marks could notbe registered eitherinPartAorinPartΒofthe Register. 15 Onthe22ndJanuary, 1981,therespondentgavethereasonsof hisdecision,which werecommunicated totheapplicantsbyletter datedthe23rdJanuary, 1981,hencethepresentrecourses,which are based onthefollowing grounds oflaw: 1.Thesub judice decision isnotduly reasoned. 20 2.The respondent acted under a misconception of law and/or fact.

1. The respondent misdirected himself and/or proceeded on wrong principles in arriving at his decision.
2. The respondent exercised this discretion wrongly and/or the 25 sub judice decision wasnotreasonably open tohim. Counselfor theapplicantsargued thattheRegistrardidnotgive any reason why hefound theproposed marksnottobe distinctive and, also, why they were notregistrable inPartΒofthe Register. Counsel also submitted that theRegistrar misconceived theevi30 dencewhichwasbefore himandwhichwas totheeffect thatthere isnootherpacketofcigarettes inthemarketwiththesamecolours and thathe wrongly found thattheevidence adducedatthehea­ ring before him didnot amounttoevidence ofuseof the marks propounded forregistration, but wasuseofthemarks in another 35 form. Healso contendedthattheRegistrar didnotdirecthismind 273 Demetriades J. DunhUI Ltd.v. Reg- of Trade Marks

(1987)to the fact that the proposed registrations were limited to certain colours which, by themselves, make the marks more distinctive and that, inthelightoftheabove,thesub •judicedecisionwasnot reasonably open to him. Counsel fortherespondent maintained thatthesubjudicedeci- 5 sion was reasonably open tothe Registrar in the light of the evidence adduced andthatsuchevidence wasnotevidenceofuseof the marksintheirproposed form buttogetherwithother material. She, also, contended that even ifthe allegation of the applicants thatthereisno otherpacketofcigarettesinthemarketwithsimilar 10 colourswascorrect, itwouldnotchange thesituationsince colour isnotbyitself a ground for registration of atrade mark. The question that hastobe decided inthese recourses iswhether the discretion of the Registrar was reasonably exercised, in otherwords,whetherthesubjudicedecisionwasreasonably open 15 to him. Thereason thatthe Registrargavefornotaccepting registration ofthe marks inquestion is,asitemanatesfrom hisjudgment, that he did not find them to be distinctive, as is required by section ll(l)(e) of the Trade MarksLaw, Cap.268.Thissection reads,in 20 thisrespect,as follows: «ll.(l)In order for a trade mark to be registrable in Part A of the register, itmustcontain orconsistofatleastone ofthefollowingessential particulars: 25 (e)any otherdistinctive mark,buta name,signature,orword or words, shall notbe registrable under the provisions ofthisparagraph exceptuponevidenceofitsdistinctiveness.» Inparagraph 4 ofthereasonsoftheRegistrar'sdecisionitisstatedthatthemarksarenotdistinctiveinthatthecolourscomprising 30 them «arecommon tothe trade for the goods concerned».Thisis oneoftheelementsthatledhimtoarriveattheconclusionthatthe markswere not distinctive. Theapplicants,however, adduced evidence before him tothe effect that no other cigarettes are sold in packets of the same 35 274 3 C.L.R. Dnnhtll Ltd.v. Reg. of Trade Marks Deinetriades J. colours.Thisevidence emanates from (a)theaffidavits of Michael Fred Barford, the editor of the «World Tobacco» magazine, an issue of which magazine was exhibited with the affidavit and in which all known and new brands of cigarettes appear, together 5 with adescription ofthe coloursoftheirpackages; (b)the affidavit of Andreas Charilaou Palazides, sales manager of the representatives ofthe applicantsinCyprus,inwhichhestatesthat nootherpacketofcigarettes,withthesamecolours,hasappeared intheCyprusmarketduringthelast10years;and(c)the affidavits 10 of tworetailers ofcigarettesinCyprus. Thisevidence,whichwasbefore therespondent, contradictshis aforesaid finding.Thereisnothinginthereasonshegaveshowing thattheabove mentioned evidence waseithercontradicted ornot true, nor there appears that any inquiry was carried out on the 15 respondent'sparttoascertain thecorrectnessofthisevidence.His failuretoconduct aninquiryintothetruthfulness ornotoftheevidence he had before him leadsme to the conclusion that the respondent, in taking the sub judice decision, may have been labouring under a misconception of fact. 20 InFoumiaLtd. v.TheRepublic,

(1983)3C.L.R.262,279,itwas decidedthatamerepossibilityofamisconception offactisenough to vitiate the sub judice decision. In the circumstances of the present case and inthe lightofthe Foumia case, supra, Ifind that the subjudice decision hastobe annulled. Inviewof this finding, 25 Ido notpropose toconsidertheothergroundsraised,butIwould liketostresstheimportanceofalimitationastocolourindeciding the question of distinctiveness for a proposed trade mark. (See section 18 of the Law, and, also, Kerly'stextbook on the Lawof Trade Marks, 10th Edition, p.22, paragraphs 2-14, and p. 160, 30 paragraphs 8-76). In the result, these recourses succeed and the subjudice decision is hereby annulled with order for costs against the respondent. Subjudice decision annulled withcosts againstthe respondent. 35 275