(1987)1987 April 22 [SAWIDES J | IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION BLUE BELL INC ,OF DELAWARE U S A , Applicant, ν THE REGISTRAR OF TRADEMARKS. Respondent (Case No 696/84) Trade Marks — Registrability — Letter of alphabet — Pnnctples applicable — The Trade Marks Law, Cap 268 as amended by Law 69/71, sections ll(l}(e), 11
(2), 11
(3)and the interpretation of the words 'Trade Mark* and *Mark* by the Interpretation section 2
(1)— Confusion or deception — Section 13 of Cap 268 — Tesr applicable — In the circumstances reasonably open to the respondent to reject registration in Class25 Pan A of the Register of the capital letter «IV» formed by dots in respect of articles of clothing on the grounds of lack of distinctiveness contrary to section 11
(1)and likelihood of confusion or deception contrary to section 13 of the said Law 5 10 Trade Marks — Registrability — Judicial control — Pnnctples applicable The respondent Registrar turned down applicants' application for registration in Class 25, Part A of the Register of Trade Marks of the capital letter «W» formed by dots, as a trade mark in respect of articles of clothing, including boots, shoes and slippers, on the following grounds, 1 5 namely (a) Lack of distinctiveness, contrary to section 11
(1)of the Trade Marks Law, Cap 268, and (b) Likelihood to cause confusion contrary to section 13 of the same law As a result the applicants filed the present recourse One of applicants' contentions was that once trade marks B13769 and B21504, which, also, 2 0 consisted of the single letter «W» in another shape were accepted as distinctive, the respondent could not treat applicants' proposed trade mark as devoid of distinctiveness and his action to refuse registration amounted to discrimination against the applicants In reply, counsel for the respondent argued that such other marks did 542 25 3 CUR. Blue Bell Inc. v. Registrar of TradeMarks not consist of a sinqle letter, but were devices or combinations with other registrable matters whereas thatof the applicant was a mererepresentation of capitalletter«W» with nootherdistinctive features 5 10 15 20 25 30 Held, dismissing the recourse
(1)This Court, as an administrative Court, does not interfere with an administrative decision regarding the registrability of a trade mark, if such decision was reasonably open to the Registrar of Trade Marks, and it does not substitute its own evaluation in the place of that of the Registrar
(2)The relevant for this case provisions are sub-section ll(l)(e) of Cap 268, sub-section
(2)of section 11 of the same law interpreting the word «distinctive» in sub-section
(1)of section 11, sub-section
(3)of section 11 of the same law, the interpretation of the words «trade mark» and «mark» in the interpretation section 2
(1)of Cap 268 as amended by Law 69/71 and section 13 of the aforesaid law*
(3)A mere companson of the proposed trade mark with trade marks B13769 and B21504 clearly supports the relevant view of therespondent It follows that there is no substance in the complaint relating to the allegeddiscnmmation
(4)The question of registrability of a plain letter of the alphabet as a trade mark and whether such mark may be considered as possessing thet charactenstics of «distinctiveness» was considered in England by the House of Lords in the leading case of the Registrar of Trade Marks ν W and G Du Cros Ltd [1913] AC 624
(5)As regards the test to be applied whether deception or confusion is likely to occur reference may be made to the judgment of Romer J in Jelhneks Trade Mark [1946]63 RΡC 59
(6)In the light of the authonties and the matenal before it, this Court came to the conclusion that it was reasonably open to the Registrar of Trade Marks to decide as he did The burden of proving that confusion could not emanate was upon the applicant, who failed to discharge it Recourse dismissed No order as to costs Cases referred to 35 White Horse Dishllers Ltd ν El Greco DistillersLtd and Others
(1987)3CLR 531, Registrarof Trade Marks ν W & G Du Cros Ltd [1913] A C 624, Re Smith Klineand FrenchLaboratones Ltd s Applications [1974) 1 All ΕR 529 andonappeal [1974] 2 All ΕR 826, *Theseprovisionsarequotedatpp 54S 549post 543 Blue Bell Inc. v. Registrar of Trade Marks Jelltnek's Trade Mark [1946}63RP.C
(1987)59. Alfred Dunhtll Ltd s Application [1982] RΡ C 145 Recourse. Recourse against therefusal oftherespondenttoregister tnPart A of the Register of Trade Marks the capital letter«W» formed by dots as a trade mark in respect of clothing, including boots, shoes and slippers Chr. Theodoulou, for the applicant. St. loannides (Mrs). for therespondent. Cur. adv. vult. SAWIDES J. read the following judgment. The applicant, a company incorporated in the state of Delaware, U.S.A. applied on the 8th November, 1983 for the registration in Class 25, Part A of the Register of Trade Marks of the capital letter *W» formed by dots, as a Trade Mark in respect of articles of 15 clothing, including boots, shoes and slippers. The respondent by letter dated 7th December, 1983, objected to the registration on the ground that the proposed trade mark lacked distinctiveness, contrary to section 11
(1)of the Trade Marks Law, Cap. 268, in that it consisted of a mere letter of the 20 alphabet. It was also found to be contrary to the provisions of section 13 of the Trade Marks Law. Furthermore,he raised an objection under section 14
(1)of the law in view of its resemblance to other trade marks already appearing in the Register of Trade Marks and in particular trade marks under 25 Registration Β 13769 and Β 21504 in respect of similar products. On the 12th March, 1984, counsel for the applicant sent to the Registrar of Trade Marks a considered reply on the matter by which he contested the objections setting out his grounds in 30 respect thereof and requesting that in case the respondent would not be satisfied with such reply, to fix the case for hearing so that more arguments in favour of the registration of the mark could be advanced. In response to such letter the respondent fixed the case for hearing on the 27th September, 35 1984. At the hearing counsel for applicant relied on the matters 544 10 3 C.L.R. Blue Bell Inc. v. Registrar of Trade Marks S a w i d e s J. raised by him in his wntten reply of 12th March, 1984 and on an affidavit sworn by a clerk of his office to the effect that the applicants were using the said trade mark for their products which they were selling in Cyprus and that dunng the years 5 1978, 1979, 1982 the value of goods imported m Cyprus was U S Dollars 74,000 He also submitted that there was distinctiveness in the use He further produced the consent of the propnetors of trade mark B13769 and suggested to send notice of the publication of the application to the propnetors of 10 trade mark B21504 The respondent delivered his judgment on the 16th October, 1984, which was communicated to counsel for applicant by letter of the same date the contents of which read as follows 15 20 25 «I refer to your heanng of 27 9 1984 in connection with the above mark, and inform you that the Registrar having re-examined your application in the light of what you have mentioned at the aforesaid heanng and having also taken into consideration your letter dated 123 84 decided as follows (a) The objections of the Registrar on the basis of section 14
(1)of the Trade Marks Law Cap 268 which are mentioned in our letter dated 7 12 83 could (
- i)The objection in connection with mark No B13769 be withdrawn once the consent of the propnetors of such mark hasbeen submitted (
- n)The objection tn connection with mark No B21504, be modified by sending a notice of the publication of your application to the owners of the mark 30 (
- b)His objections however, in respect of section 11
(1)and 13 of the Law cannot be withdrawn and they are hereby affirmed » As a result, the applicant filed the present recourse challenging the said decision and praying for a declaration that the sub judice is null and void and of no effect whatsoever 35 Counsel raised the following grounds of law in support of his application* 1 The decision is not duly reasoned 545 S a w i d e s J. Blue Bell Inc. v. Registrar of Trade Marks
(1987)- The respondent misdirected himself and/or proceeded on wrong principles in arriving at his decision.
- The respondent acted under a misconception of Law and/ or fact.
- The respondent failed to consider whether the mark proposed for registration was inherently adapted to or capable of distinguishing the applicant's goods. 5
- The respondent acted in violation of Article 28 of the Constitution which provides for the principle of equality, and discriminated against the applicant. 10
- The respondent did not take into consideration the provisions of the Law concerning cases where use of a mark is shown and proved.
- The respondent exercised his discretion wrongly. Byhiswritten address counsel for applicant contended thatthe 15 Registrar wrongly interpreted and applied the law. He further submitted that once trade marks B13769and B21504 which also consisted of thesingle letter«W»inanother shape,were accepted asdistinctive,the respondent could not treattheapplicant's trade markasdevoid of distinctiveness.Counsel alsoadded thatthefact 20 thattheapplicant hasbeentradinginCyprusforanumberofyears under such distinct markmade itmandatory on the respondent to accept it as distinctive mark and have it registered accordingly. Lastly, counsel contended that the Registrar, having already accepted the two trade marks, reference to which has already 25 been made, for registration, though consisting of a single letter, was bound to accept the applicant's trade mark also for registration and his action to refuse it amounted to discrimination vis-a-vis the owners of those marks and the applicant. Counsel for the respondent, on the other hand, submitted that the proposed markconsisted of an alphabetical letterand assuch it was lacking of distinctiveness. She further added that single letterseven withevidenceoflonguseareinherently unregistrable unless such letters are written or designed in a particular manner 35 so as to be registrable as a device and not as a letter. She further contended thattheRegistrarcorrectlyapplied thelaw,particularly inthecircumstancesofthepresentcasewhere registrationofsuch trade mark was likelyto cause confusion orthere was reasonable 546 30 3 C.L.R. Blue Bell Inc. v. Registrar of Trade Marks S a w l d e s J. probability of deception. Counsel argued that the applicant on whomtheburden ofproof restedfailedtoshowthatregistrationof its mark will not contravene the provisions of section 13 of the Trade Marks Law. In dealing with the contention of counsel for 5 applicantastothe alleged discrimination inrespectof the owners of the othertwo trade marksshe submitted thatsuch other marks did not consist ofa singleletterbut were devicesor combinations with other registrable matter, whereas that of the applicant wasa mere representation of capital letter «W» with no other distinctive 10 features. In support of her argument in this respect counsel produced facsimiles of the three trade marks for comparison purposes. Counsel finally submitted that bearing in mind all the factsofthecaseandtherelevantprovisionsofthelaw,thedecision complained of was not arbitrary but was lawfully taken and 15 reasonably open tothe respondent. In the course of the hearing of this recourse counsel for applicant filed an affidavit sworn by an attorney in charge of the trademarksoftheapplicantthematerialpartofwhichisasfollows; «1 20 2.1havealongexperience intrademarkmattersalloverthe world. Based onthisexperience, Isaythatsincethe Registrar has accepted trademark Nos B13769 and B21504 as distinctive, heshould haveacceptedalsotheapplicants' mark which issimilar, according to him,asdistinctive. 25 3.1 confirm and repeat the contents of the affidavit ofMiss YiannoullaTheophanous of 14/3/1984thatthereisuseofthe applicant's mark in Cyprusand that for theyears 1978,1979 and 1982,thesalesoftheapplicants'productsinCypruswere approximately U.S.Dollars 74,000.» 30 The contents of paragraph 2 of such affidavit is a mere expression of opinion. Asto the contents of the third paragraph thematerialcontained thereinwasbefore the Registrar embodied inthe affidavit of Yiannoulla Theophanous sworn on 14.3.
- The principles governing the exercise of jurisdiction by the 35 SupremeCourtasanadministrativecourtarewellestablishedand approach of thiscourt, in thisrespect, isthat itdoes not interfere with an administrative decision regarding the registrability of a trade mark ifsuch decision was reasonably open to the Registrar ofTrade Marksand itdoes notsubstitute itsown evaluation inthe 40 placeofthatoftheRegistrar.Thisapproach oftheSupreme Court 547 Sawides J. Blue Bell Inc. v. Registrar of Trade Marks
(1987)has been reiterated in the recent decision of the Full Bench in Revisional Appeal 505 (White Horse DistillersLtd. v. El Greco Distillers Ltd. andothers.in which judgment was delivered on the 20th February, 1987,nolyetreported)*andinwhichourcaselaw on the matter has been reviewed. t The objections raised bythe respondent against the registration of the subject matter trade mark, were originally based on section 11
(1). 13and 14
(1)ofTrade MarksLaw.Cap.268.Atthe hearing before him and after the production by counsel for the applicant of the written consent of the proprietor of trade mark 10 B13769 and his undertaking to send a notice of the applicant's publication to the proprietors of trade mark B21504, the objection of the respondent under section 14
(1)was withdrawn. The material partof section 11
(1)readsas follows: «11
(1)Inorder foratrademark toberegistrableinPartAof 15 the register, it must contain or consist of at least one of the following essential particulars:(a)Thenameofacompany, individual,orfirm, represented in aspecial or particular manner; (
- b)20 (0
- id)(
- e)any other distinctive mark but a name, signature, or word orwords,otherthansuchasfallwithinthedescriptionsin the foregoing paragraphs (a), (b), (
- c)and (d), shall not be 25 registrable undertheprovisionsofthisparagraph except upon evidence of itsdistinctiveness». The interpretation of the word «distinctive» appearing in subsection
(1)ofsection 11isgiven under sub-section
(2)ofthesame section as follows: «For the purposes of this section 'distinctive' means adapted, inrelation togoodsinrespect ofwhichatrade mark isregistered orproposed toberegistered,todistinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of 35 •Reportedm {1987)3CLR. 531. 548 30 3 C.L.R. Blue Bell Inc. v. Registrar of Trade Marks which nosuch connection subsists S a w i d e s J. » Itisfutherprovidedundersub-section3ofsection 11asfollows: 5 «In determining whether a trade mark is adapted to distinguish as aforesaid the Registrar may have regard to the extent towhich(a) the trade mark is inherently adapted to distinguish as aforesaid; and 10 15 20 (b)by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.» The interpetation section, 2
(1), as amended by Law 69/71 provides: «'trade mark' meansexceptwithreference toa certification trade mark,a markusedorproposed tobe used inrelationto goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark whether with or without any indication ofthe identity ofthatperson;». Thesection alsoprovides:«'mark' includes a device, brand, heading, label, ticket name, signature, word, letter, numeral, or any combination thereof». Section 13provides asfollows: 25 «Itshall notbe lawful toregisterasatrade mark orpartofa trademarkanymattertheuseofwhichwould,byreasonofits being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary tolawormorality, oranyscandalous design.» 30 Bearing inmind the above provisionsand inthe lightof allthe material before him the respondent refused to register the trade mark applied for which consisted of a plain letter «W»as, in his opinion, irrespective of the fact that such letter was formed by dotted lines, nevertheless, it was clearly a letter of the alphabet 35 without anydistinctiveness and likelytocause confusion. The Registrar had in mind the other two trade marks which as allegedbycounselfortheapplicant,consistedalsoofaletterofthe alphabet but found that those marks were devices or special 549 Sawides J. Blue Bell Inc. v. Registrar of Trade Marks
(1987)designs and not mere reproductions of plain letters of the alphabet. Amerecomparisonofthefacsimilesofthethreetrademarks,the one proposed byapplicant andthoseunderregistrations B13769 and B21504 clearly supports the view of the respondent that the 5 proposedtrademarkoftheapplicantisareproductionoftheletter «W»in capital,though formed bydotted lines,whereasthe other two marks form devices or special designs which visually do not givethe impression of aplain letter ofthe alphabet. In view of the above Ifind no substance in the complaint of 10 counsel for applicant for discrimination against the applicant's trade mark inthisrespect. Sections 11and13ofCap.268correspondtosections9and11 respectivelyoftheEnglishTradeMarksAct1938ofwhichtheyare in fact reproductions. Also the definition of «trade mark» and 15 «mark»under interpretation section 2
(1)of Cap.268arethesame asinthe EnglishAct. InKerly'sLawof TradeMarksand Trade Names, 12th Edition, 1986atp.84 under paragraphs 8-24, itreads:«Before the 1905Act,lettersnotbeingessentialparticulars, 20 theComptrollerobjectedtoregisternamesofletters.However, the definitions of 'mark' in section 3 of the 1905 Act and section 68 of the 1938Actinclude 'letter', but lettersare not generally distinctive. A word representing phonetically the namesofletters,notthemselvesregistrable,isnotaninvented 25 word.» The question of registrability ofa plain letter of the alphabet as a trade mark and whether such mark may be considered as possessing the characteristics of «distinctiveness» was considered in England by the House of Lords in the leading case of the RegistrarofTradeMarksv.W.&G.Du Cros, Ltd.[1913]A.C.624 30 inwhichitwasheldmatatrademarkwhichconsistedoftheletters «W»and «G» Coined by the copulative symbol «&»)written in a running hand witha distorted tailtothe «G»ending up under the «W»and another mark which consisted of «W& G»in ordinary block letters notwithstanding that they had become in fact 35 distinctive in the London area, were not distinctive within the meaningofthewordinsection9oftheTradeMarksAct1905and weretherefore not registrable. 550 3 C.L.R. Blue Bell Inc. v. Registrar of Trade Marks S a w i d e s 4. The judgment of Lord Parker in the above case is very elucidating onthematter.Itreadsatpp.634,635,636,asfollows:- 5 10 15 20 25 30 35 40 * «In my opinion, in order to determine whether a mark is distinctive itmustbe considered quiteapartfrom theeffectsof registration. The question, therefore, is whether the mark itself, if used as a trade mark, is likely to become actually distinctive of thegoods of thepersonso using it.Theapplicant for registration in effect says, Ί intend to use this mark as a trade mark, i.e., for the purpose of distinguishing my goods from the goods of other persons', and the Registrar or the Court has to determine before the mark be admitted to registration whether itisofsuchakindthattheapplicant,quite apart from the effects of registration, is likely or unlikely to attain the object he has in view. The applicant's chance of success in this respect must, I think, largely depend upon whetherothertradersarelikely, intheordinarycourseoftheir business and without any improper motive, to desire to use the same mark,orsome mark nearly resembling it,uponorin connection with their own goods. It is apparent from the history of trademarksinthiscountry thatboththe Legislature and theCourts have alwaysshewn a naturaldisinclination to allow any person to obtain by registration under the Trade MarksActsamonopoly inwhat othersmaylegitimately desire to use. For example, names (unless represented in some special manner) and descriptive words have never been. recognized as appropriatefor use astrademarks. Itistrue that they became registrable for the first time under the Act of 1905, but only if distinctive, and they cannot be deemed distinctive without an order of the Board of Trade of the Court.This restriction does notapply tomarksconsisting ofa letter or combination of letters, but before such a mark be acceptedthe Registrar ortheCourthastobe satisfied thatitis adaptedtodistinguish thegoods of theapplicantsfrom those of others. Itneed notnecessarily be so adapted, andwhether itisorisnotsoadaptedappearstodependlargelyonwhether other traders are or are not likely to desire in the ordinary course of theirbusiness to make use in connectionwith their goods of the particular letteror letters constituting themark. There seems no doubt that any individual or firm may legitimately desire in the ordinary course of trade to use a 551 S a w i d e s J. Blue Bell Inc. v. Registrar of Trade Marks
(1987)mark consisting of his or their own initials upon, or in connection with,hisortheirgoods.Theapplicant company's cars are marked W&Gbecause those are the initial lettersof the christian names of the partners in the firm to whose businesstheapplicantcompanyhassucceeded.Theuseofthe 5 initials of an individual or firm on the goods, packing cases, letter paper, and invoices of such individual or firm is common. Individuals whose names were William Green or Wallace Graham, or firms whose names were Weston and Gibbs or Wilcox and Gathome, might desire to make use in 10 this way of the letters W G or Wand G, and it would be a strong thing to deprive them of therightto do so. Itisto be observed that initials are even less adapted for trade mark purposes than names, and the latter (unless represented ina special manner) cannot be deemed distinctive without an 15 order of the Board of Trade or the Court. Under these circumstances, I cannot think that the mark *W & G», whether in script orinblock type, isinitself distinctive within the meaning oftheAct.» Dealing with the question of distinctiveness acquired through 20 useofthetrademark, LordParkerhadthistosayatp.637:«There is, however, a proviso in s.9 to the effect that in determining whether a mark is distinctive in this sense the tribunal may consider the extent to which actual user has rendered the mark in fact distinctive. But the tribunal is not 25 bound to allow registration even if the mark be in fact distinctive. A common law mark is still not necessarily registrable. If the tribunal finds that a mark is anywhere, or among any classofpeople,infact, distinctive of the goodsof theapplicant, itmaybe influenced bythisfact indetermining 30 whether itisadapted todistinguish thesegoodsfrom thoseof otherpersons,butdistinctivenessinfactisnotconclusive,and the extent towhichthe tribunal willbe influenced byitmust, inmyopinion,depend onallthecircumstances,includingthe area within which and the period during which such 35 distinctiveness in fact can be predicated of the mark in question. Inthepresentcaseitappearsthatthemark«W&G»inscript is at the present moment, and in a particular area, in fact distinctiveof thecarsof theapplicantsforregistration,butthe 40 area within which the time duringwhichsuch distinctiveness (552 3 C.L.R. Blue Bell Inc. v. Registrar of Trade Marks S a w i d e s 4. has existed are, in my opinion, insufficient to displace the opinion I have formed on more general grounds.» Useful assistance may also be derived from the concurring judgment of Lord Shaw in the above case both in respect of the 5 undesirabilityoftheregistrationoftrademarksconsistingsimplyof letters of the alphabet and the functions of the Registrar when dealing withsuch cases.Thusatp.629,itisstated:- 10 15 20 25 «There is. however, one point in the discussion to whichI desire particularly to refer. Iallude to the view taken by the Court of Appeal with regard to the position and duty of the Registrar of Trade Marks. My Lords, in my opinion, that official, when an application for registration ismade, hasnot onlyanadministrativebutalsoaquasi-judicial function. Ithink that he hastoexercise a discretion, exercisingit, ofcourse,in ajudicial spirit.Touse the words of Lord Herschell in Enon's Case, 'while he isincertain casesprohibited from registering. a discretion whether to register or not seems in all cases plainly conferred. Of course this discretion must be reasonably and not capriciously exercised'. But in the next place, Ithink that those provisions of the statute, towhich Iamabouttorefer, shewthathisactionisnot merely of a preliminary character {passingon the case tothe stage when opponents of the registration may appear), butis of the character of ajudicial pronouncement on the meritsof the application itself.» Andatpp. 631,632:- 30 35 40 « , speaking for myself, I should describe the duty of the Registrar as this:that examining the particular facts, he hasalso tosurvey the possible confusions ordifficulties whichmightariseinconsequence ofthegrantof the trade mark, or the possible impairment of the rights of innocenttraderstodothatwhich,apartfrom thegrant,would be theirnatural mode of conducting theirbusiness.What,my Lords,couldbe a more naturalmode ofconducting business than that a trader whose initialsare 'W. and G.' should put these initialsuponthegoodswhichhevendsoruses?Andyet for some reason, as Isay, not disclosed, it is proposed to reservetheseinitials,whichmaybetheinitialsofhundredsof other traders,as the exclusive property of one person under theguiseofatrademark.» 553 Sawides J. Blue Bell Inc. v. Registrar of Trade Marks
(1987)On the question of use of plain letters of thealphabet we read the following atp.630:«Accordingly, if a trade mark were granted for 'W & G' simpliciter, it would disable all those traders who contemplated entering the motor business from attaching to their own goods their own initials except under the peril of infringement. 1cannotthinkthatthestatutemeanttograntany such privilege under the guise ofa trade mark.» 5 Andat pages632,633:« Ido not think that any right which issubstantially by 10 way of monopoly should be granted toone particular trader, to use under the guise of a trade mark and for himself alone initialswhich maybeofgeneral use intrade. 15 Iftheblocklettersaretobecondemned theyareto be condemned in this language of the Master of the Rolls whichIam abouttoread:'In myopinionthisisan illegitimate attempt totake exclusive possession ofa partof the alphabet to the detriment offuture traderswhomay honestly desireto 20 puttheirown initialson theirown goods'». An effort to distinguish the above case was made in Re Smith Kline&FrenchLaboratoriesLtd.'sApplications [1974] 1AllE.R. 529 which however was reversed on appeal [1974] 2 All E.R. 826). Reference may also be made to the judgment of Romer J. in Jellinek's Trade Mark [1946] 63 R.P.C. 59 as to the test to be applied whether deception or confusion is likely to occur. The following isstated atpage78:«UpontheevidencewhichIhavebefore me,whatisthetest 30 which Ihave to apply in considering whether deception or confusion within themeaning ofs. 11islikelyto occur? Mr. Burrell, on behalf of the Opponents, submitted to me thefollowing propositionswithregardtothissection:
(1)Inall applications for registration ofatrademarktheonusisonthe 35 applicanttosatisfy theRegistrar(ortheCourt)thatthereisno reasonable probabilityof confusion.
(2)Itisnot necessary, in ordertofind that a markoffends againstthesection,toprove 554 25 3 C.L.R. Blue BeU Inc. v. Registrar of Trade Marks 5 10 15 20 S a w i d e s J. that there is an actual probability of deception leading to a passing-off. Itissufficient if theresult of the user of themark will be that a number of persons will be caused to wonder whether itmight notbe the case thatthetwo productscome from the same source. It is enough if the ordinary person entertains a reasonable doubt.
(3)In considering the probability of deception, all the surrounding circumstances have to be taken into consideration.
(4)In applications for registration,therightsof theparriesaretobe determinedasat the date of theapplication.
(5)The onus mustbe discharged by the applicant in respect of all goods coming within the specification applied for, and not only in respect of those goods on which he is proposing to use it immediately, nor is the onus discharged by proof only that any particular methodof userwillnotgiverisetoconfusion; thetestis;What can theapplicantdo? I think that these propositions are, in substance, well founded, and I would merely add,with regard tothesecond of them,the following extract from the judgment of the late Farwell, J., in Bailey's case, reported in 52 R.P.C, 136, at page 153: ΊthinkthattheCourthastobe satisfied notmerely that there is a possibility of confusion; I thinkthe Courtmust be satisfied thatthereis a real tangible danger of confusion if the markwhich itissought toregister isput onthe Register.» 25 Inthe case of Alfred Dunhill Ltd. 'sApplication [1982] R.P.C. 145 a markconsisting of aletter«d» with exaggerated ascenderin a broken circlewas refused for registration bothinPartAand Part Β (in spite of some evidence of distinctiveness) as being «for all practicalpurpose a 'd'mark»so thatthegoods «wouldbe likelyto 30 be referred toas 'd' goods». Itwas held inthatcase inrefusing registration inPartA that: 35 40 «
(1)Since themarkconsisted essentially of a letter *d\ the circularborderbeing merely avehicle for itsdisplay, aperson givingoralorwrittenordersfor goods bearingthemark would be mostlikely tospecify themas 'd' goods, the 'd' appealing to both ear and eye; this being so, the mark could not be distinctive.
(2)The mark did not come within the rules of practice adoptedby the Registrarconcerningthe registrabilityofletter marks; 555 Sawides J. Blue Bell Inc. v. Registrar of Trade Marks
(1987)
(3)Theemploymentofa'verylongascenderontheletter 'd' is acommondevice which does notrenderamarkasa whole a device mark; nor does it demonstrate any inherent adaptedness to distinguish.» Itwas further held inrefusing registration inPartΒthat: 5 «
(1)Itis notpossible toinfer from themere appearanceof the mark, for which therewas noevidence of factual capacity to distinguish, that it has a sufficient degree of inherent capacity to distinguish the applicant's goods from the similar goods of othertraders identified by theletter 'd'. 10
(2)Where alettermarkwillalmostinevitably be known and referred toasthatletter,disclaimer oftheexclusiveuseof 'the' letteris ineffect adisclaimer of theexclusiveuse of the whole mark.This would be a negation of the exclusive natureof the rightconferred upona trademarkproprietor.» 15 Inthepresentcase onthematerialbefore meIhave cometothe conclusion thatitwas reasonably open tothe Registrar to decide as he did. The burden of proving that confusion could not emanate, was upon the applicant who failed to discharge such burden. 20 On thebasis of the wellestablished principlethatthe Supreme Court in the exercise of itsjurisdiction as an administrative court does not interfere with the decision of an administrative organ, if such decision was reasonably open to itand cannotsubstitute its own discretion tothatoftheappropriateorgan, Ifind noreasonto 25 disturb the decision of therespondent inthe present case, once I have reached the conclusion that such decision was reasonably open tohim. In the resulttherecourse failsandishereby dismissed butinthe circumstances Imake noorderfor costs. Recourse dismissed. No orderas to costs. 556 30