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(1988)1988July 12 [KOURRIS. J.] INTHEMATTEROFARTICLE146OFTHECONSTITUTION FROMAGERIESBEL, Applicant v. THEREPUBLICOFCYPRUS,THROUGH 1.THEMINISTEROF COMMERCEANDINDUSTRY, 2.THEREGISTRAROFTRADEMARKS, Respondents. (CaseNo.519/86). Trade marks—Registrability-^Resemblance toamark already registered— Course tobefollowed—Principles applicable—The Trade Marks Law, Cap. 268,section 14
(1). Trademarks—Registrability—Confusionordeception, likelihoodof—Testapplicable—The TradeMarksLaw,Cap. 268,section13. 5 Trademarks—Registrability—Judicialcontrol—Principlesapplicable. Trade marks—Evidence—Nouse yet of proposed mark in Cyprus— Allegationsastoconfusionordeception—Correctlytreated,inthecircumstances,asopinionevidence—Suchevidencecorrectlydisregardedbythe RegistrarofTradeMarks. \0 BymeansofthisrecoursetheapplicantsinpugnthedecisionoftheRegistrarofTradeMarkstoallowtheregistrationofthetrademarkoftheinterestedparty. The mark of the applicants depicts a heard of a cow with wordsin French"LaVacheQuiRit"andinGreek"Iageladapougela",whereasthe 15 markof theinterestedpartydepictsawholecowinprofile view withthe English words "Lucky Cow" and Greek words "Laky Kaou Gala Evapore". 1400 3 C.L.R. Fromageries Bel v. Republic Itmustbenotedthattherewerealreadyseveral marksontheregister whichincludedthedeviceofthecowandthatthedeviceofthecowiscommontothetrade. 5 10 15 20 Thisrecourseraised theissueofwhether theRegistrar,indismissing theobjectionoftheapplicantandallowingtheregistrationofthesubjudice mark,actedcontrarytosection 14
(1)and13ofCap.268. Held,dismissingtherecourse:
(1)Indeterminingthequestionwhether themarkinquestion offended s,14(l)theRegistrar had,first,toconsider whetherthegoodsoftheapplicantswereofthesamedescriptionwiththose oftheinterestedpartyand,ifyes,whetherthedegreeofresemblancebetween thetwomarkswassuchastobelikely todeceiveorcause confusion. InthiscasetheRegistrar followed theaforesaid path.Sheappliedthe correct principles, as such principles'emanate from the case law. She judged the resemblance both by reference to the eye as well as to the ear.Herdecisionwasreasonablyopentoher.
(2)Indeterminingtheobjectionundersection 13 theRegistrarcorrectly appliedthetestinJellinek'sTradeMark[1946]63R.P.C.59;Asthemark hadnotbeenusedinCyprus,shecorrectlytreatedallegationsof confusion asopinionevidence,whichshehadtodiscard.
(3)ThisCourtdoesnotinterferewithadecisionastotheregistrability ofatrademark,ifitwasreasonablyopentotheRegistrar. Recoursedismissedwithcosts. Casesreferrredto: 25 Jellinek'sApplication [1946]63R.P.C. 59; Seixo v.Provezende [1895]L.R.I Ch.192; SmithHoydenandCo.Ltd.Application[1946]63R.P.C.97; The 7-upCompanyv. TheRepublic
(1973)3C.L.R. 612; BeechamGroupLtd. v.TheRepublic
(1982)3C.L.R.622; 1401 Fromageries Bel v. Republic
(1988)WhiteHorseDistillersLtd. v. ElGrecoDistillersLtd.andOthers
(1987)3 C.L.R.
  1. Recourse. Recourse against the dismissal of applicants' opposition in Appl. Nos.23717 and 23718for theregistration of the words 5 Lacky Cow and Cow and device as trade mark in class 29of ScheduleIVoftheTradeMarksRules,1951-
  2. /. Spanopoulos, for applicant. L. Koursoumba (Mrs.),fortherespondent. A. LiatsosforK.Michaelides,forinterested party. *' Cur. adv. vult. KOURRIS J. read the following judgment. The present recourse is directed against the decision of the Registrar of the Trade Marks,dated 7th June, 1985,whereby hedismissed the opposition of the applicants in Applications Nos. 23717 and , 23718ofthewords"Lucky Cow"andLuckyCowanddeviceas trademarksinClass29ofScheduleIVoftheTradeMarksRules 1951- 1984inrespect ofevaporated milkandmilk productsof theinterestedparty. Thesalientfactsofthepresentrecoursearebriefly asfollows:- y On28.4.1983Kommanditgesellschaft, Dimex Nahrungmittel Import and Export GmbH & Co. , (hereinafter referred to as "Kommanditgesellschaft") acompanyorganized andexistingunderthelawsof Federal RepublicofGermany,filedapplications No.23717and23718withtheRegistrarofTradeMarks,forthe 7 registrationofthewordsLuckyCowandLuckyCowanddevice as trade marks in class 29 of Schedule IV of theTrade Marks Rules 1951-84,inrespectofevaporatedmilkandmilkproducts. Thedevicesoftheirtrademarksaredepictedinpara 1 oftheDe1402 3 C.L.R. Fromageries Bel v. Republic Kourris J. cision of theAssistant Registrar of TradeMarks which isappend­ ed totheApplication as Exhibit! andwhich for thepurposes of thisOpposition will bereferred toas "the Decision". 5 10 15 20 25 The applicationswere acceptedfor registration inpartΒofthe Register of Trade Marks and,as toapplication 23718, on condi­ tionof disclaimer of the device of thecow andthewords "evapo­ rated milk" and "Γάλα εβαπορέ με όλες τις βιταμίνεςTov"and limitation tobe used only for evaporated milk, and,as toboth ap­ plications,onconditionthatafter advertisement in theofficial Gazetteof theRepublic noticeof such advertisement should besent totheowners of thetrademark 8998LaVache QuiΓ«,ηαγελάδα που γελά and device. On 12.4.84 notices of opposition to both applications were filed by theadvocate of the Applicants, Messrs Fromageries Bel, Mr.J. Spanopoulos from Nicosia,who are theregistered owners of trademarks Nos.8998inclass 29 La Vache qui rit and device for all the goods of class 29 of Schedule IV of theTrade Marks Rules 1951 -84.Thedevice of theirtradeMarks is asdepictedin para 2of theDecision. On20.7.84 acounter-statementwas filed by theadvocate of Kommanditgesellschaft, Mr.Kyriakos Michaelides. -R. 7 in ex­ hibits 1&
  3. On 5.9.84 five
(5)affidavits were filed by advocate for the Applicants which referred tobothoppositions andwere returned totheadvocate tobe sworn separately for eachcase. On 21.9.84 threeof those affidavits were filed again separately for eachopposition: 30 a) Affidavit dated 18.9.84 and declared by Demetris Kalavanas, the general manager of IMEXPO Ltd in Nicosia, the sole traderepresentatives in Cyprus of theApplicants - R. 20 inexhib­ its 1and2. 1403 Kourris J. Fromageries Bel v. Republic
(1988)b) Affidavit dated 19.9.84declared by Kyriacos Leptos, grocer inNicosia. -R.19in exhibits 1 and
  1. c)Affidavit dated 19.9.84anddeclared by Charalambos Roubinas, grocer in Nicosia. -R.18 inexhibits 1 and
  2. On 15.3.85 both parties agreed that the Oppositions 419 and 420 beconsolidated.- R. 28ofOpposition files 419and
  3. 5 Onthe26.7.85 Kommaditgesellschaft, filed anaffidavit dated 25.7.85 declared by Takis Pilavas owner of a Supermarket - R. 36inexhibits 1 and
  4. Both oppositions were fixed for hearing on 9.10.
  5. At the 10 said hearing Mr. A.Liatsos andMr. Marios Georghiou appeared for Kyriakos Michaelides, advocate for the Kommanditgesellschaft, and Mr.J. Spanopoulos appearedfor theApplicants. The Registrar, having considered very carefully everything properly put before him by theparties to those proceedings, in- 15 eluding allthematerial facts andconsidering theadmissibleevidence and counsels' submissions, came to the conclusion that Kommanditgesellschaft had discharged theonus of establishing that the use of their mark applied for registration would not offend against the relevant legislative provisions and therefore 20 found that theoppositions failed, and consequently be dismissed the Opposition and directed that applications Nos 23717 and 23718 beproceeded toregistration as advertised. On 12.6.1986, the Respondent's Decision as aforesaid was communicated tocounsel for theApplicant -Exhibit 1 appended 25 totheapplication. As aresult, theinterested party filed thepresent recoursechallenging thesubjudice decision and praying for itsannulment on the ground that the Registrar actedundera misconception of law and/or facts, inabuse and/orinexcessof powerand/orthat heex- 30 ercised hisdiscretion wrongly. Theinterested party further alleg1404 3 C.L.R. r 5 10 Fromageries Bel v.Republic Kourris J. ' es that the Registrar was wrong in evaluating the evidence adduced bytheapplicants. •- - Asrightly stated by therespondent Registrar inhissubjudice decision, in reaching his decision theRegistrar had toapply the following provisions of s.13 and S.14
(1)of the Trade Marks Law,Cap.268 whichread as follows:' "s".13. It shall not be lawful toregister as a trade mark or partof a trade mark anymatter theuseof whichcould byreasonof itsbeing likely todeceive orcause confusion orotherwise, be disentitled to protection in a Court of Justice, or wouldbecontrary tolawormorality,orany scadalousdesign. 15 s. 14
(1)Subject to theprovisions of subsection 2 no trade mark shall beregistered inrespectof any goodsordescription ofgoods that isidentical withatrade markbelonging toa different proprietor and already on the register in respect of the same goods or description of goods,or that so nearly resemblessuch a trademark as tobelikely todeceiveorcauseconfusion." 20 The wording of ss.13 and 14
(1)of Cap. 268 above, is the same as that of sections 11 & 12
(1)of the Trade Marks Act, 1938in England. 25 30 Therefore, the Registrar had toconsider whether the relevant applications offended against S.14
(1)and for thispurpose he had to consider (
  1. i)whether the goods in respect of which the applicants (interestedpartyinthisrecourse)wereseeking registration, were the same orthe samedescription asany of the goodsof the respondents (applicants inthis recourse); (
  2. ii)if so,thedegreeof resemblance presuming normal and fair manner of use of the goods.Also,hehad toconsider whetheritoffended s.13; In considering the application under S.14
(1)the Registrar examined first, whether thegoods wereof thesamedescription. Afteranalysing properly thelegalposition withreference tothewell 1405 Kourris J. Fromageries Bel v.Republic
(1988)-established criteria for determinating suchquestions and applyingthetestlaid down in theJudgmentof Romer,J.in thecaseof Jellinek's Application 1946, 63R.P.C. 59 atp.70,the Registrar came totheconclusion that thegoods wereof the samedescription. Having found that the goods wereof the same description, 5 theRegistrar then proceeded tothesecond issuewhichcalled for consideration, namely a comparison of the marks.The Registrar quitelegitimately compared thetrademarksinthemanner which well appears in Cap. 17 of Kerley's Law of Trade Marks and Trade Names, 11th edn.,paragraphs 17-07 to 17-41,pp.407 - ,« 430. At p. 407 of that book from the summing up of Lord Cranworth, in Seixo v. Provezende, [1895] L.R. , 1Ch. 192, it is stated:"What degree of resemblance is necessary is from 15 thenatureof things incapableofdefinition apriori. And the standard ofcourseis notalwaysthesame." And further down onthe samepageof thatbook"Itfollows thatexcept in sofar asthey laydown any generalprinciple,thedecided casesareoflittleassistance inthede- 20 termination of new questions of fact raised upon materials ; In all cases as states above, it should be borne in mind that a decision on the question whether a mark so nearly resembles another as tobe likely todeceive orcause confusion is not an 25 exerciseofdiscretion byatribunalbutafindingof fact." Samebookpages415 -416para 17-19 "Common elements:somedicta In Broadhead's Application, Evershed M.R. followed the observations of Lord Russell in Coca Cola Canada v.Pepsi 30 1406 3 C.L.R. Fromageries Bel v.Republic ' Kourris J. ' r' ColaCanada,wherehe stated:*Whereyou get,acommonde*nominator, you mustinlookingatthecompeung'formulae pay much"more regard tothe parts of the formulae which are not common - although it does not flow from that that you must treat the words as though the common part was not there at all'.Where common marks are included in the trade marksto becompared, orinoneofthem,thepropercourseistolookat themarks aswholes, and not todisregard theparts which are common. In the Kleenoff, case Maugham L.J. said: 'Ih the present case my view is that the test of infringement where the trade mark hasadescriptive element isthesame asthetestwhereit hasnodescriptiveelement,except sofar asthedescriptiveelement isitself common tothetrade.' 15 20 25 In Harrods'Application, theRegistrar stated: 'Itisawellrecognised principle that has tobetaken intoaccount in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common elementwhichisalsocontainedinanumberofothermarksin useinthesamemarket,suchacommonoccurrenceinthemarkettendstocausepurchaserstopay moreattention totheother features of the respective,marks and to distinguish between themby thosefeatures. This principle clearly requires thatthe markscomprising thecommon element shallbeinfairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used'." Same book p.417 para 17-22 "The resemblance between two marks must be considered withreference totheearaswell astotheeye." Same book p.423para.17- 30 "In general, the existence,of.a number of marks, either as 1407 f Kourris J. Fromageries Bel v.Republic
(1988)commonmarksoras trademarks, mayoperatetorenderafiner distinctionallowable thanwouldotherwise bethecase,for thepersons concerned in thetrade in questionmay havehad theirattention directed to thekind of distinction which exists between themarkpropounded and any of theothers, because 5 it isanalogous to the knowndistinctions existing between the latter." The relevant passage of thedecision of therespondent Registrar is stated in paras. 20& 21of theDecision which read as follows:- 10 "20.Further and despitetheprovisionsof s.16ondisclaimersIproceeded tocomparefurther thetwomarks:Themanner trademarks arecompared, well appears inChapter 17of Kerry's Law of Trade Marks, 11th Ed. , paras 17 - 07 -17 -
  1. Comparing therefore the marks in the light of the said legal 15 principles and bearing in mind that the resemblance must be considered with reference totheearaswellastotheeyeIhave reached theconclusion thattheydonothaveconsiderablesimilarity both visually and phonetically totheextent prohibited by s.l4(l) of theTrade Marks LawCap.268(asamended). 20
  2. Bearing in mind the aboveconsiderations and giving to thematterthemostcareful attentionandconsidering theadmissible evidence and considering also the Counsels' submissions, I have reached the conclusion that the Opponent's objection under sec. 14
(1)fails." In the lightof the above -quoted legal principles, and thereasoningof the subjudice decision of theRespondent Registrar, the Registrar wascorrect in hisDecision and it wasreasonably open tohim toreach hisdecision. Inparticular, themark of theapplicant depicts aheadof acow 30 with words inFrench "La VacheQui Rit"and inGreek "Iagelada pou gela", whereas the mark of the interested party depicts a whole cow inprofile view with theEnglish words "Lucky Cow" 1408 25 3 C.L.R. 5 10 ,c 20 2^ Fromageries Bel v. Republic Kourris J. andGreekwords "Laky KaouGalaEvapore".Further,as already stated in the subjudice decision of therespondentin paragraphs 15 - 19, there were already several marks on theregister which includedthedevice of thecow andthedevice of thecow iscommon to the trade.Inpoint of fact, trade mark No. 12847 of the Morinaga Milk Industry Co. Ltd. seems to have more resem­ blance to the mark of the applicant, whereas marks 9993 and 7944 resemble morethemark of theinterestedparty. ι In conclusion, the Registrar in testing the resemblance with reference bothtotheearas well astotheeye,andbearing inmind thatthereexisted anumberof themarks inthesametrade contain^ ing that common element, a fact which is well -recognized as tendingtocausepurchasers topay moreattention totheother fea­ turesof therespective marks andtodistinguish thatby thosefea- . tures it was reasonably open tohimtoreach theconclusion that v themarks did nothave aconsiderable similarity bothvisually and \ phonetically totheextentprohibitedby S.14
(1)and, therefore,this point cannotstand.The Registrar, having decided thematter un­ der S.14
(1)hethenproceeded toconsider thecase under s.13. Indoing so,heapplied theOVAX test which was formulated by theCourtin thecase of Smith Hoyden and Co. Ltd.Applica­ tion, [1946] 63 R.P.C. 97 atp. 101 andcited in Kerley's Law of Trade MarksandTradeNames 11thedn. at p. 134,paragraph 10 -02 which reads as follows:"Assuming userby HorisLimitedof theirmarksHovis and Ovi in anormaland fair mannerfor any of thegoods covered by theregistrations of thesemarks (andincludings particularly goods also covered by the proposed registration of the mark Ovax) is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if Smith Hayden & Co.Ltd. also use their mark Ovax normally and fairly in respect of any goods cov­ ered by theirproposed registration;". The Registrar further stated thattheevidence was adduced by 1409 Kourris J. Fromageries Bel v.Republic
(1988)both of theparties on thequestion whether it was likely that deception or confusion might arise, which he carefully read and considered, but acted on theprinciplethat, astheproposed marks had not been used in the market yet,the affidavits submitted by theopponents weremerelyopinions and werenotevidenceof ac- 5 tual incidents of confusion or incidents of no confusion, and thus, proceeded to dec de the matter on the test laid down by Romer J. inJelihek's Trade Marks [1949]63R.P.C. 59atp.
  1. The Registrar, on the facts ofthecase before her,decided that she was not convinced that by using interested party's trade JQ marksintheCyprusmarkettherewasalikelihoodofdeception or confusion within the meaning of s. 13.In her decision the respondent registrar with regard tothispoint, said the following: "Readingcarefully these affidavits I amnotconvinced that by usingtheapplicantstrademarksintheCyprusmarketthere 15 isa likelihood ofdeception orconfusion within themeaningof s.
  2. Todecide on this question Ihavein mind the test asin effect was laid down by Romer J. in Jellinek's Trade Marks [1949] 63 R.P.C. 59 atpage 78: 20 'Upon theevidencewhich Ihavebefore me,whatisthetest which I have to apply in considering whether deception or confusion within the meaning of sec. 11 is likely to occur; It is sufficient if the result of the user of the mark will be 25 that a number of persons will becaused towonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt'. I think that these propositions are the test, and I would 30 merely add, the following extract from thejudgement of the lateFarwell, J., inBailey's case,reported in 52RPC., 136at 1410 3 C.L.R. Fromageries Bel v. Republic .Kourris J. page, 153:ΊthinkthattheCourthas tobe satisfied notmerely that thereis a possibility of confusion; I thinktheCourtmust be satisfied thatthereis areal tangibledanger of confusionif themark which it is sought toregister is putonthe Register.'" 5 10 15 20 25 «Q ;<Iamof theyiew thatitwas reasonably open totheRegistrar to reachthisdecision andtheopposition unders.13 fails. Furthermore, I am satisfied thattherespondent Registrar has correctly discarded opinion evidence adduced before her. (See The 7 · Up Company v. TheRepublic
(1973)3 C.L.R. 612, and the case law referred to therein. Furthermore,the respondent Registrar properly directed herself on the law as to the onus of proof incases of oppositionproceedings underss. 13& 14of the Trade MarksLaw. The onus of proof is on the applicants who have toestablish boththattheirtrademark is registrable andthat theoppositionis not justified. The approach of the Supreme Court as to when the Court shouldinterfere with anadministrative decision regarding thereg­ istrability of a trade mark, is that "this Court will not interfere with such adiscretion if dueweight hasbeen given toallmaterial facts, ithas notbeenbased on amisconceptionof law orfact, and it was notexercised in excess or abuse of power. (See Beecham GroupLimited ν TheRepublic
(1982)3 C.L.R. 622 atp. 633). In arecentcase,WhiteHorseDistillersLtd.v. ElGrecoDistil­ lers Ltd.and Others
(1987)3 C.L.R. 531,it was heldby theFull Bench of the Supreme Court that on the basis of the principles governing the exercise of its jurisdiction, as an administrative Court inthefirst instanceandonappeal,does notinterfere with an administrative decision regarding theregistrability of a trade mark if such decision was reasonably open to the Registrar of Trade Marks and itdoes notsubstitute its own evaluation in the placeof thatof the Registrar. Inthepresentcase,onthematerial before me,which was also before therespondentRegistrar, andhaving carefully considered 1411 Kourris J. Fromageries Bel v.Republic
(1988)thereasons given bythe RegistrarofTradeMarksforthesubjudice decision, Ihave cometo theconclusion that it was reasonably open tohertodecideas shedidandherdecision is, therefore, affirmed. In the result, the recourse fails and is hereby dismissed with costs in favour of the respondent. Costs to be assessed by the Registrar. 5 Recourse dismissed with costs infavour of respondent. 1412

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