(1988)1988May31 [SAWIDES,J.] INTHEMATTEROFARTICLE146OFTHECONSTITUTION BRASSERIEDUCARDINALFRIBOURGS.A., Applicants, v. THEREGISTRAROFTRADEMARKS, Respondent. (CaseNo. 647/84). Trademarks—Registrability—Judicialcontrol—Principlesapplicable. TradeMark—The TradeMarksLaw, Cap. 268, sections11
(1)(d)and(e)— Distinctivenessanddirectreferencetocharacterofthegoods—Theprinciples underlying suchquestions—Plough Inc. v. TheRepublic
(1988)3 C.L.R.145followed. 5 TradeMarks—The TradeMarksLaw, Cap. 268, section 13—Deception,possibilityof—PloughInc.v.TheRepublic
(1988)3 CLJi. 145followed. TradeMarks—Registrationinanothercountry—Significance. Thefactsofthiscaseappearsufficiently inthejudgment Recoursedismissed. 10 Costsagainstapplicant. Casesreferredto: PloughInc.v.TheRepublic
(1988)3CJuR.145; Needle-TipTradeMark[1973] R.P.C.113; White HorseDistillersv.El Greco Distillers Ltd. andOthers
(1987)3 C.L.R. 531. 1110 15 3 C.L.R. Brasserie du Cardinal v. Reg.of Trade Marks Recourse. Recourseagainst therefusal of therespondent toacceptapplicant'sapplication for theregistration of theword "Moussy"with deviceasatrademarkinclass 32inrespectoftheirproducts. 5 Chr.Theodoulou,for the applicants. St.Ioannidou (Mrs.), for the respondent. Cur. adv. vuli. SAVVIDES J.read thefollowing judgment.Theapplicants,a Swisscompany, manufacturers of non-alcoholicbeer,ale,porter etc.challengeby thisrecoursethedecision of therespondent dated 16thOctober, 1984,wherebyherefused toacceptthe application of the applicants under No. 24377 for the registration of a trademarkinrespectoftheirproductsinclass32of the Register ofTradeMarks. Thefactsof thecasearebriefly as follows: The applicants on 1stDecember, 1983,applied for theregistration of the word "Moussy" and the device of two lines and a smallletterinbetween themallinanovalframe asatrademarkin class32for non-alcoholic beer,aleandporter,mineral andaerated waters andother non-alcoholic drinks,syrupsandotherpreparation for making beverages. 30 Theapplication havingbeenconsidered foracceptancewason the 28th January, 1984, objected'to by the respondent on the ground that theproposed mark hasdirectreferencetothecharacter orquality of the goods contrary to the provisions of s. 11
(1)(d)of theTradeMarksLaw,Cap.268andthatitisnotdistinctive under s.ll
(1)(e)anditisalsocontrary totheprovisions of s.13 of the same law because the word "Moussy" is a misspelling of the word "Mousse" which is found in the French Dictionary of Collin Robert, 1978, to mean, froth, foam of beer. Also in the 1111 Savvides J. Brasserie du Cardinal v. Reg. Trade Marks
(1988)FrenchDictionaryLarousse is givenasmeaningfoam formedon thesurface ofcertainliquids.AlsointheGreek/French Dictionary Vassiliou, 1972, it is found "Mousse" as meaning "αφρός"and "Mousseux" asmeaning"αφρώδης". Theapplicantsonthe8thMarch,1984,fild aconsideredreply 5 throughtheiradvocate reservingtheirrightfor ahearing if their application was refused again.Havingconsideredthewrittenre ply of theapplicantstherespondentfixed thecase for ahearing, which was heldonthe27thSeptember, 1984. After hearingtheargumentsputforward therespondentdecid- 10 ed thattheobjections unders. 11
(1)(d), (e)ands. 13couldnot be waived and consequently refused applicants' application. Uponarequest for statementof groundsof decision addressedto therespondenton30th November, 1984, therespondentgavein writing thegrounds of hisdecision which,infact,werethesame ^5 as thoseembodied inhisoriginalobjection tothe registration but with moredetail answering allpointsraised by counselfor appli cants.As aresult applicantsfiledthepresentrecourse challenging theabove decision. Thegrounds of law onwhich therecourse is based aretothe 20 effect thatthe subjudice decision is notduly reasoned; the re spondentmisdirected himself and/orproceededonwrongprinci ples inarriving athisdecision; thatheacted undera misconcep tion of law and fact; that he failed to consider whether the proposedforregistration markwas inherentlyadaptedtoorcapa- 2 s ble ofdistinguishing applicants'goods;thathewronglytranslated the word constituting themark and/or madewrong assumptions aboutitsmeaning;thathefailed totakeintoconsiderationthat the proposed trademark is famous andregistered inother countries andfinallythathe,himself, exercised hisdiscretionwrongly. By his written address counsel for applicants expoundedon his grounds of law andsubmittedthattheword "Moussy" is an invented word andthatnotonlyitis distinctive as suchbutalso thecombinationwith thefigurativeelements shownonthelabel 1112 3 C.L.R. 5 0 4 Brasserie du Cardinal v.Reg. ofTrade Marks Savvides J. clearly makesitdistinctive.Hefurther contended thattherespondentarbitrarily proceeded tomake assumptions abouttheFrench word in considering that the words "Moussy" and "Mousse"are thesame and wrongly considered thattheapplication wasfor the registration of "Mousse" instead of "Moussy". He further contended that thetrade markinquestion isregistered inanumberof English speakingcountries suchasIreland, Canadaandisusedin a number of othercountries such asthe United States andit was also registered in other English speaking countries such as the United Statesof America, South Africa, Australia and that England also isin the process toaccept it and the Registrar failed to takeintoconsideration suchregistrationinothercountries. Counsel alsoargued thatthetrademark inquestion hasnoreference tothecharacter or thequality of thegoods and concluded by submitting that thedecison of the Registrar wasnot duly reasonedand thathemisdirected himself and/orproceeded on wrong principlesinarriving athisdecision and alsothatheactedundera misconception of lawandfact and failed toconsiderwhetherthe proposed for registration mark wasinherently adapted orcapable ofdistinguishing theapplicants' goods. Counsel for respondent rejected the arguments of counsel for applicants and submitted that the decision complained of was properly andlawfully taken bytherespondentinthe proper'exercise of his powers and discretion under the relevant legislation havingtakenintoconsideration allrelevantfacts andcircumstances and consequently this Court should not interfere with hisdiscretion since itisobvious that dueweight has been givenbyhim toallmaterialfacts, therewasnomisconception of laworfact on. hispart and noexcessorabuseofpower byhim. "Counselforrespondentexpoundedonthegroundsofthedecision of-the Registrar and submitted that they were well founded and that it was reasonably open tothe respondent toarrive athis decision ashedid inthepresentcase. Thequestion ofdistinctiveness anddirectreference tothechar-, 1113 Savvides J. Brasserie duCardinal v. Reg. ofTrade Marks
(1988)acter andqualityof thegoodsunder s. 11and thepossibilityof deceptionorconfusion unders. 13ofthelawaswellastheprinciplesunderlyingthemhavebeenconsideredinanumberofcases by thisCourt in which theEnglish CaseLawonthematterhas beenreviewed.Arevisionofthesecasesappearsinthe recentde- 5 cision of theFull Bench in Revisional Appeal No.523 Plough Inc. v. The Republicof Cyprus through the Registrar ofTrade Marks
(1988)3C.L.R. 145andIfindit unnecessary torepeat them. Thequestionofregistrationofamarkinaforeign countryand \Q thebearingofsuchregistrationin proceedingsforaregistrationin Cyprushasalsobeen considered inPough Inc. (supra)inwhich reference is made to Kerly's Law of Trade Marks and Trade Namesatp. 123, para.8-67 whichreadsasfollows: "Useofregistration abroad. 15 Onan application toregister amark for usein theUnited Kingdom,itisdistinctivenessintheUnitedKingdomthatisin question. Thus extent of registration and use of the mark abroadareofsecondarysignificance,ifany". Usefulreference maybemadeinthisrespecttothedecisionin 20 Needle-Tip TradeMark[1973]R.P.C. 113andinparticularthe following atp. 118: "Itseemstomethatthemerefact thatamarkhasbeenregisteredinaforeign countryhaslittleornobearingonwhether themarkiscapableofdistinguishingthegoodsofthe applicant 25 inthiscountry.Registration intheforeign countrywouldhave beenallowedaccordingtothelawandpracticeinthatcountry whichmaydifferfrom-thatofthiscountryandmayhavebeen allowed in the light of particular circumstances and trading conditions in that country. Itmaybe that,inacase where a 39 markappliedfor herehasalready beenregistered inaforeign countrywithasystemoftrademarklawsimilartoourown, if awrittendecisionof the foreign tribunalallowing registration 1114 3C.L.R. BrasserieduCardinalv. Reg. ofTradeMark SavvidesJ. in the foreign country and which showed the grounds of the decision and the matters taken into consideration were to be adduced on the application here, it might be persuasive as a pieceofreasoning as towhetherthemark should beregistered here, if, but only, if, similar considerations applied in this country; but that, it seems to me isas far as registration in a foreign country could berelevant toregistrability here.Itisto be noted that in Swift's case the Divisional Court was influenced by what was referred to as 'a scholarly and persuasive judgment of theFull Courtof theHigh Court of Australia.On the present appeal, however, all that has been relied upon is themere fact of theregistration inthecountriesmentioned and that mere fact, asIhavealreadystated,isof littleor nobearing on whether the mark is capable of distinguishing the applicants' goods in this country." The approach of our Supreme Court as to when the Court should interfere withan administrativedecision regarding theregistrability of atrade mark hasbeenrecently reviewed by theFull Bench in Revisional Appeal No.505 WhiteHorse Distillers Ltd. v. El Greco Distillers Ltd. and Others
(1987)3 C.L.R. 531 in which it washeldthat theSupremeCourtonthebasisof theprinciples governing theexercise of itsjurisdiction as an administrative Court in the first instance and on appeal does not interfere with an administrative decision regarding the registrability of a trade mark if such decision wasreasonably open tothe Registrar ofTradeMarksanditdoesnot substituteitsownevaluation inthe placeofthatof the Registrar. Inthepresent case,on thematerialbefore meandhavingcarefully considered the reasons given by the Registrar of·Trade Marksfor refusing theregistration of thetrademark inquestion I havecometotheconclusion thatitwasreasonably open tohimto decide ashedid and hisdecision is,therefore, affirmed. ; RecoursedismissedMth costs infavour of respondent. 1115