(1987)1987ApnI8 [SAWIDES J ] INTHEMATTEROFARTICLE 146 OFTHE CONSTITUTION FERRERO S P A , Applicant, ν THEREGISTRAR OFTRADE MARKS, Respondents (CaseNo 38/84) TradeMarks— Registration of— Judicialcontrol—Principlesapplicable By means of this recourse the applicant challenges the validity of the respondent's decision, rejecting the registration of the word «DUPLO», wntten inplain capital letters astrademark inPartA,Class30 of the Register of Trade Marks in respect of confectionery, biscuits and cakes, tarts, icecream,honey,pasta and flour forpasta 5 Therespondent,havingsoughtguidancefromdictionanesandinparticular Cassel'sItalian— English and English— Italian Dictionary,3rd Edition,came to the conclusion thatthe word «DUPLO»,thoughnotvery commonly used in modem Italian, nevertheless it had a grammatical meaning that of 1 0 «Double- Inthelight ofthisfinding therespondentfurtherconcludedthatthe word «DUPLO»is descriptive of some of thegoods sought tobe registered and has, therefore, a direct reference to their character or quality (Section 1l(l)(d)* of the Trade Marks Law, Cap 268) and thatinrespect of theother goods its use mightbe deceptive (Section 13*of thesame law) 15 Held, dismissingthe recourse
(1)This Court, asan administrativeCourt, does notinterfere with an administrative decision regarding the registrability ofatrademark,ifsuchdecision wasreasonably opentotheRegistrarofTrade Marks, and does notsubstitute itsown evaluation in the place of thatof the Registrar
(2)Onthematenalbefore it,thisCourtcametotheconclusionthatthesub judice decision was reasonably open totherespondent Recoursedismissed No orderas to costs 'Quotedatρ 540 536 20 3 C.L.R. Fen-ero S.P.A. v. Registrar of Trade Marks Casesreferredto: WhiteHorseDistillers Ltd. v.ElGrecoDistillers Ltd.and Others
(1987)3 C.L.R.531. 5 Recourse. Recourse against the refusal of the respondent to register the word «DUPLO»inplain capital letters in Part Ainthe Registerof Trade Marksin respect of confectionery, biscuits and cakes,tarts, ice cream, honey, pasta andflourfor pasta. G.M.Nicolaides,for the applicant. 10 St Ioannidou, forthe respondent. Cur.adv. vult SAW1DES J. read the following judgment. The applicant, a registeredcompany inItaly,appliedonthe 17thDecember, 1982 for the registration of the word «DUPLO» written in plain capital 15 letters as trade mark in Part A, class 30 of the Register of Trade Marks in respect of confectionery, biscuits and cakes, tarts, icecream, honey, pasta and flour for pasta. The application was considered by the respondent on the 18th January, 1983, who rejected the application on the ground that the proposed trade 20 mark had, in accordance with section ll(l)(
- d)and (
- e)direct reference to the character or quality of the goods and was not distinctive and also that itwas deceptive under section 13of the Trade Marks Law, Cap. 268. The applicant then, through its advocate, applied for a hearing of the application before the 25 Registrar, which wasfixed forthe 27th October, 1983. Atthe hearing ofthe case counsel forapplicant argued that the word«DUPLO»inItaliandidnotmeandoubleandthatthe proper word for double in Italian is «doppio». Even if «DUPLO» is considered as meaning double, counsel submitted, it can have 30 onlyreference toquantitybutnottothequalityorcharacterofthe goods. Therespondentdeliveredhisjudgmentonthe11th November, 1983which was communicated tocounsel for applicant by letter ofthesame date, thecontents ofwhichread as follows: 35 «I refer to the hearing of the 27th October, 1983 in connection withtheabovetrade mark. 537 S a w i d e s J. Ferrero S.P.A. v. Registrar of Trade Marks
(1987)Iinform you that the objections to the registration of your trade markcontained inmyletterwiththesamenumber dated 18.1.1983,havebeen considered carefullyinthelightofwhat was argued at the hearing but unfortunately they cannot be withdrawn and they arehereby confirmed.» 5 The reasoned decision of the respondent was issued and communicated tothe applicant on 17.1.
- Asa result the applicant filed the present recourse challenging thesaid decision and prayingfor a declaration thatthesubjudice decision isnull and void and of no effect whatsoever. 10 Counsel for applicant raised the following grounds of law in support ofhis application: 1.Therespondentactedunderamisconception oflawand fact. 2.The respondent misdirected himself.
- It was not open to the Registrar to find that the word 15 «DUPLO» has direct reference to the character or quality of the goods or that it isdeceptive asto the character and quality of the goodsfor which itistobe used. Byhiswrittenaddresscounselforapplicantinexpoundingonhis grounds of law, submitted that the word «Dupio» is an archaic 20 Italian word nowobsolete and no longerinuseand thatthe word double in Italian is«doppio».Also, that even if the word «dupio» hadthemeaningattributedtoitbytherespondent,itwasnotopen tohimtofind thatithad directreference tothecharacterorquality of the goods or that itisdeceptive. 25 Indealingwiththeobjection oftherespondentundersection 13 of the Law, he made reference to the corresponding English section and submitted thattheobjection oftherespondenton this ground is unfounded and in any event no reasoning isgiven to explain hisobjection. 30 Counsel fortherespondent, ontheotherhand, contended that the sub judice decision was properly and lawfully open by the RegistrarintheexerciseofhispowersundertheTradeMarksLaw. She submitted that the proposed mark isnot registrable in PartA of the Register, as it is a word which has direct reference to the 35 characterorqualityofthegoodsforwhichthetrademarkissought toberegistered and assuch,contrarytosection 11
(1)oftheTrade Marks Law, Cap. 268. She further submitted that the word «Dupio» isdirectly descriptive of the goods in question because 538 3 C.L.R. Fenrero S.P.A.v. Registrar ofTrade Marks Sawides J. they are sold in doubles and secondly it is deceptive both under section 11
(1)and section 13 of the Trade Marks Law. In dealing with the meaning of the word «dupio» she submitted that it was reasonably opentotheRegistrar to reachtheconclusionthatsuch 5 wordhada grammaticalmeaning,thatof «double», andassuchit had direct reference tothe characterand quality of thegoods for which thetrademarkwas sought tobe registered. Counsel further contended that the said trade mark was not registrable inPartΒeither,asthe applicantonwhomtheburdenof 10 proof lied,failed completely toprove andsatisfy theRegistrarthat the markapplied for registration maybecome distinctive in future and thatitwill notcontravene the provisions of section 13 of the Trade MarksLaw, Cap.268. The approachof ourSupremeCourt,asto whentheCourtmay 15 interfere with an administrative decision regarding the registrability of a trade mark, has been recently reviewed by the FullBenchinRevisional Appeal 505 (WhiteHorseDistillersLtd. v. El Greco Distillers Ltd. and others) in which judgment was delivered on 20th February, 1987 (not yet reported)*. Itwas held 20 inthatcase that:- 25 30 35 «Itisthewellestablished approachof ourSupremeCourt, on the basis of the principles governing the exercise of its jurisdiction as anadministrativeCourtin thefirstinstanceand on appeal, that it does not interfere with an administrative decision regarding the registrability of a trade mark if such decision was reasonably opentotheRegistrar ofTradeMarks and does notsubstitute itsown evaluation intheplace ofthat of the Registrar (see, inter alia, in this respect, Merck v. The Republic,
(1972)3 C.L.R.548, 564, Seven-Up Company v. The Republic,
(1973)3C.L.R.612,621, CurzonTobacco Co. Ltd.v. 7ne/?epub/ic,
(1975)3C.L.R.363,369, andonappeal
(1979)3 C.L.K. 151, 158, Beecham Group Ltd. v. The Republic,
(1982)3 C.L.R. 622, 632, P.M. & G. Stavrinides ClothingIndustries Ltd. v. The Republic
(1983)3 C.L.R. 98, 107, Effems AG. v. TheRepublic
(1985)3 C.L.R. 793, 798, Pepsi Co. Inc. v. The Republic
(1985)3 C.L.R. 1092, 1102 and Rsons Ltd. v. The Registrar of Trade Marks,
(1985)3 C.L.R.2318,2327).» *Reportedin
(1987)3 C.L.R. 531. 539 SawidesJ. Ferrero S.P.A.v.RegistrarofTradeMarks
(1987)Withthe above inmind Icome now toconsider theposition in the present case. The relevant provisions relied upon by the respondent in arriving at his decision to object to the registration of the trade mark,thesubjectmatterofthisrecourse,aresections11
(1)and 13 5 on theTrade MarksLaw.Cap. 268 Section 11
(1)provides as follows: «11
(1)Inorderforatrademarktoberegistrable inPartAof the register, it must contain or consist of at least one of the following essential particulars:- 10 (a)Thenameofacompany,individual,orfirm, represented inaspecial orparticular manner; (
- b)the signature of the applicant for registration or some predecessor inhisbusiness; (c)an invented word orinvented words; 15 (
- d)a word or words having no direct reference to the character orquality of thegoods,and notbeingaccording to itsordinarysignification ageographical name ora surname; (
- e)any other distinctive mark but a name, signature, or word or words, otherthan suchasfall withinthedescriptions 20 in the foregoing paragraphs (a), (b), (
- c)and (d),shall not be registrableundertheprovisionsofthisparagraphexceptupon evidence of itsdistinctiveness.» and section 13readsasfollows:«Itshall not be lawful toregisterasa trademark orpartofa 25 trade markanymattertheuseofwhichwould,byreasonofits being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to lawor morality,orany scandalous design.» In the present case the relevant paragraph of section 11
(1)is 30 paragraph (d). The respondent came to the conclusion on the basis of the material before him, that the word «DUPLO» though not very commonly used in modem Italian, nevertheless, it had a grammatical meaning, that of double. In so finding he sought 35 guidance from dictionaries and in particular Cassel's Italian- 540 3 C.L.R. Ferrero S.P.A. v. Registrar of Trade Marks S a w i d e s J. English andEnglish-ItalianDictionary,3rd Editionatp. 172 where the meaning of the word «Dupio» isgiven as «Double». Bearing in mind the above he further concluded thatthe word sought to be registered as atrade mark was aword directly descriptive of some 5 of the goods sought tobe registered and therefore having direcct reference to the character or quality of such goods contrary to paragraph (d) of section 11
(1). In respect of the other goods covered by the same trade mark his finding was that the use of such word mightbe deceptive.Therespondentalso found thatthe 10 proposed registration was likely todeceive undersection 13. Applicant's application was for registration of the said mark in Part A and not in part B. The case was all along considered and decided by the Registrar on thatbasisundersections 11
(1)and 13 of the Law. Although under section 19
(3)it is provided thatthe 15 Registrar may, if the applicant is willing, instead of refusing the application,treatitasanapplication for registration inPartΒofthe Register, it does notappear eitherfrom the contentsof thefile of the case or the addresses of counsel thatthe applicant expressed any wish in this respect. Therefore, the lengthy argument of 20 counsel for the respondent concerning registrability underpart Β is irrelevant and immaterial,bearing also in mind thatitdoes not emanate from the reasoned decision of the Registrar thathe has considered registration of the mark inpart B. In the present case, on the material before me, and having 25 considered carefully the reasons given by the Registrar of Trade Marksfor refusing the registration of the trade mark inquestion, I have cometotheconclusion thatitwas reasonably opentohimto decide,ashedid.Onthebasisofthewellestablished principlethat the Supreme Court, in the exercise of its jurisdiction as an 30 administrative Court, does not interfere with the decision of an administrative organ if such decision is reasonably open to such organ and cannot substitute its own evaluation to that of the appropriate organ, Ifind no reason to disturb the decision of the respondentinthepresent case onceIhave reachedtheconclusion 35 thatsuch decision was reasonably open tohim. In the result the recourse fails and is hereby dismissed with no order for costs. Recoursedismissed. No orderas to costs. 541