clr/1988/1988_3_1029.pdf

(1988)of theRegisterof TradeMarksinrespect ofjackets, shirtsblouses, shorts, dresses, skirts and tennis shoes. G.Nicolaides, for the applicants. St. foannides (Mrs.), for the respondent. Cur. adv. vult. 5 DEMETRIADES J. read the following judgment. The applicants challenge, by this recourse, thedecision of the respondent dated the 13th February, 1985,whereby herejected the application of the applicant for theregistration of a trademark in Class 25 of the Register of Trade Marks in respect of jackets, shirts, slacks, blouses, shorts, dresses, skirts and tennis shoes. *" The applicants, a company registered in U.S.A., applied on the 20th March, 1984, for the registration of a trade mark under No. 24799, in class 25 of the Register. The mark appears in the file of theapplication, which isexhibit "X"before theCourt, un- 15 der reds 3,4 and 5. The respondent, after considering the application, replied by letter dated the 15th May, 1984, addressed to the applicants' counsel, thatanobjection wasraised totheregistrationoftheproposed mark,on theground that "itlacksdistinctiveness andthatit is comprised of simplecolours". ^0 The applicants requested a hearing which took place on the 25th January, 1985.During thehearing,applicants'counsel stated that the trademark wasregistered inEngland, that itisdistinctive, that the same mark was accepted for registration in Cyprus in respect of cigarettes and became well known from thecigar- • " ettes. He also filed the Trade Mark Journal of theUnited Kingdom to show that thetrade mark was accepted for registration in theUnited Kingdom. Therespondent, by letterdated the 13thFebruary, 1985,com1030 30 3 C.L.R. 5 ΙΟ 15 Morris v.Reg.of TradeMarks DemetriadesJ. municated his reserved decision toapplicants' counsel, stating thatafter considering whatwas statedatthehearing,hefoundit impossible towithdraw his original objections. Upontheappli­ cants'request, theAssistantOfficial Receiver andRegistrardelivered, onthe5thApril, 1985,herreasoned decision totheircoun­ sel. As a result, the* applicants filed the present recourse challenging theabovedecision. Counsel for the applicants mainly rested his case on the groundsthatthesubjudicedecisionis notduly reasonedand that therespondentactedunderamisconceptionof thelaw. Hisargu­ mentsinthisrespect,are,firstly, thatitisdeducedfrom the con­ tentsof thereasoneddecisionthattherespondentfailed to consid­ er whether the proposed mark was inherently adapted to distinguish the goods of theapplicants in respect of which the registration was sought,asis provided by section 1l

(3)(a)ofthe TradeMarksLaw, Cap.268; and,secondly, thatthe respondent, byfailingtoallowregistrationof themarkinPartΒ of the'Register,actedunderamisconceptionoftheLaw,inthat heconsidered thatthecriteriaforregistration inPartB'arethesameasthoseap­ plicable forregistration inPartA'of theRegister. 20 Counsel for therespondents argued, onthe otherhand, that the sub judice decision is duly reasoned and thatits reasoning may be supplementedfrom thematerialinthefile andthatsuch decision was reasonably opentothe respondent.' 25 Before proceedingtoconsidertheargumentsofcounselIshall makeabriefreference tothe contentsof thereasoneddecisionof therespondent.Hiereasoneddecision starts infact atp. 2para. 7,whichreadsasfollows: "7.Unders.ll(l)(e) theRegistrar has toconsider whether themarkpropoundedforregistration isinfact distinctive." 30 Therespondentthenquoteswhatwas saidonbehalf of the ap­ plicants atthehearingandproceededtoconsiderandanswerthe pointsraised atsuchhearing.As regards registration of themark 1031 Demetriades J. Morris v. Reg. of Trade Marks

(1988)inEngland,therespondentdecided thatitis of secondary signifi­ cance, if any, andinreference totheregistration anduse of the mark in Cyprus in respect of cigarettes, thedecision was tothe effect thatthemarkalreadyregistered isnotthesamebutcontains othermatteranduseof itinCyprus inthatotherform cannothave 5 any bearing onthecase which concernsregistration of themark inrespect of different goods. Thedecision thenconcludesas fol­ lows: "

1. Theapplicants did notprove by reason of use orany othercircumstancesthattheirmarkhasinfact becomedistinc- IQ tive in Cyprus for the goods of the application
2. Having therefore, carefully considered themarkpro­ pounded for registration in thelight of theabove considera­ tions, Ihave cometotheconclusion thatitis notentitled for registration under the provisions of section ll(l)(e) of the 15 law, asithasnot becomedistinctive infact,inCyprus.
3. Ihave also considered whether themark would beac­ ceptable for registration in part 'B'of theRegister underthe provisions of section 12of theLaw. Itseems tome however, thatfor thesamereasonsalready advanced for whichthetrade 20 mark is not registrable in part Ά' of the Register, the said markcannotbecapableof distinguishing thosegoods. Therefore, registration inpart'B'is also refused.
4. The application is, therefore, refused unders.l9

(2)of theTradeMarksLaw Cap.268,because themarkfails tosat- 25 isfy theprovisions of s.l 1, ands.12 of the Law." Itis obvious from theabove that thereasoned decision of the respondentdeals with andanswers only the mattersraised on ap­ plicants'behalf during thehearing before theRegistrar, and finds that the mark is not in fact adaptedtodistinguish thegoods for 30 which registration is sought. Although itisdesirable thatallmat­ ters considered by theRegistrar should appear in detail insuch 1032 3 C.L.R. Morris v. Reg. of Trade Marks Demetriades J. reasoned decision, Iwould not gosofar as tosay that the subjudicedecision isnotdulyreasoned. The subjudice decision isnot just thereasoneddecision inquestion,which isonlypartof itand if the missing reasoning is supplemented by any material contained in the file, the decision should not be annulled on this ground. The Registrar, by his letter dated the 13th February, 1985,in fact maintained his objections which were originally raised. For this purposereference may bemade tored 6in thefile, which is the letter of the Registrar containing his original objections. The 10 objections are,as stated earlier on in thisjudgment, that theproposed mark lacks any distinctive character and is comprised of simple colours. It is to be assumed, having also regard to the principle of regularity, that the Registrar, at this stage,has con,c sidered whether themarkisinherently adapted todistinguish, as provided in section 11

(3)(a)of theLaw. I, therefore, find that this part of thereasoning of the subjudicedecision which ismissing from thereasoned decision of the respondentissupplementedfromthematerialcontained inthe file of theadministration and, asaresult, this ground is dismissed. Asregardsthesecondground raised bytheapplicants,thematerial part of the decision of the Registrar is tobe found in para. 17 quoted above.The burden of providing misconception of either fact or law lies on theapplicants. Both counsel are in agreement that the considerations for registration in Part B' are the 25 sameasthoseforregistration inPartA', but lessonerous. 30 ne Although the decision of the Registrar on this point is very concise,hefoundthatthemarkcannotbecapableof distinguishingthegoodsandIcannot saythat hewasacting under amisconception ofthelawand thathe-viewed theconsiderations forregistration in Part B' with the same force as in part A'. I will therefore, dismissthisground also. In theresult thisrecourse fails and is hereby dismissed but in thecircumstances,Iwill makenoorder astocosts. . 1033 N Recourse dismissed. o orderas to costs.