clr/1988/1988_3_145.pdf

(1972)3 CLJi. 548 ώρρ. 561.562,adopted. Trade marks—Registrability—Foreignregistrations—Of no consequential significance. Trademarks—Registrability—Usein Cyprus—Significance. Trademarks—Registrability—Distinctivenessunders.11ofTheTradeMarks Law,Cap.268—The case-lawonthematter. Trade marks—Registrability—Part Β of register—Section 12 of TheTrade MarksLaw,Cap.268—Thecase-lawonthematter. Trade marks—Registrability—Confusion or deception—Likelihood of — Section 13 of the Trade Marks Law, Cap. 268—The case-law on the matter. The respondent Registrarrefused registration of thewords "Tropical Blend"asatrademarkforappellant*sproductseitherinPartAorinPartΒ of theRegisterof TradeMarkson thegroundsof lackof distinctiveness andaseriouslikelihood ofconfusion ordeception. 145 Plough Inc. v. Republic

(1988)Hisreason for finding lack of distinctiveness was based,as explained by him,ontheground that"TropicalBlend"connotesprimarily association with the tropicswhich innoway isdiminishedby theadditionof theword "Blend".Therefore,themark was notcapabletodistinguish theappellants' productsinthemannerenvisagedbys. 11andfor muchthesamereasonsit 5 was notcapableof distinguishing theirgoods from othergoodsinthetrade inordertojustify registration under, s. 12. Thepresentappeal is directedagainst theJudgmentof aJudgeof this Court,whereby appellants'recourse,impugning theaforesaid refusal, was dismissed. 10 Counselforappellantssubmittedthat: (a)TheRegistrar failed toapply theprovisions of theParis Convention for theProtectionof Industrial Property,as subsequently revised,which was ratified by Laws63/65 and66/83.Itmustbenotedinthisrespectthat thetrademarkpresently underconsideration was registered intheUnited States,asignatory andadherenttotheconvention. 15 (b)TheRegistrar was wrong inreachingtheconclusion thatthewords in question lacked distinctiveness and are likely tocause confusion or deception. (c)TheRegistrar failed topayduecognizancetothefactof thelongand 20 extensiveuseof thetrademarkinquestionandtothefact thatthemarkhad been accepted for registration and was in fact registered in a numberof Commonwealthandothercountrieshaving asimilar law andprocedureas in Cyprus. Held,dismissingtheappeal:

(1)AcomparisonofArticle6quinquiesof theConvention with sections 11 and 13of theTradeMarks Law and its effect uponsuchprovisions hasbeenmadeby A.Loizou,J.inthecaseof E. Merck v. TheRepublic

(1972)3C.L.R. 548 at pp. 561,562. Inthe light of thispassage,which thisCourtadopts, therelevantgroundofappeal fails.

(2)Inthelightofprinciplesemanatingfrom thecase-lawrelatingtothe distinctiveness of a markundersection 11,itsregistrability undersection 12(PartΒ of theRegister)andthelikelihoodofdeceptionorconfusionand in the light of the findings of the trial Judge, the appeal, in so far as it relates totheaforesaid matters,isboundtofail.

(3)Foreignregistrations areof noconsequentialsignificance. The trial 146 25 30 35 3 C.L.R. Plough Inc. v. Republic Judgerightlycame to theconclusion that in the absence of sufficient particularstoilluminatethebackgroundtoforeignregistrationthedecision oftheRegistrarwasproperlytaken. 5 10

(4)Thoughuseof amarkinCyprusisamatter whichmaybetaken intoconsiderationbytheRegistrarinreachinghisdecisionitisnotbyitself acriterionwhichmayweighthescalesinfavouroftheregistrationofthe trade mark. However, undueweightcannotbe given tosuchelementto overweigh therequirement unders. 11for distinctivenessof themarkin question.

(5)ThisCourt,asanadministrativeCourt,doesnotinterfere withan administrativedecisionregardingtheregistrabilityofatrademarkifsuch decision wasreasonablyopentotheRegistrarofTradeMarksanditdoes notsubstituteitsownevaluation intheplaceofthatof theRegistrar.The subjudicedecisionwas,indeed,reasonablyopentotheRegistrar. 15 Appealdismissed.Noorderastocosts. Casesreferredto: Mercky.Republic

(1972)3C.L.R. 548; CurzonTobaccoCo.Ltd. v.TheRepublic

(1975)3 C.L.R.363;andon appeal

(1979)3 C.L.R. 151; 20 StavrinidesClothingv.TheRepublic

(1983)3C.L.R.98; Peleticov.RegistrarofTradeMarks

(1986)3C.L.R.490; SocieteNationaleElfAquitainev. TheRegistrarofTradeMarks

(1987)3 C.L.R.1420; BlueBellInc. v.TheRegistrarofTradeMarks

(1987)3C.L.R.542; 25 AmericanTelephoneandTelegraph Company v.TheRegistrarofTrade Marks

(1987)3C.L.Ri966; WhiteHorseDistillersLtd. v.ElGrecoDistillersLtd.andOthers

(1987): C.L.R. 531; 147 Plough Inc. v. Republic (198*) Needle-TipTradeMark [1973] RJ>.C.113; ThePerfection [1909] RP.C.,Vol .26,p. 561; Appeal. Appeal against thejudgment of aJudge of the SupremeCourt of Cyprus (PUds,J.) givenonthe30th August, 1985 (Revisional 5 Jurisdiction Case No. 115/84)* whereby appellant's recourse against therefusal of theregistration of "TropicalBlend"eitherin part A orpartΒ of theRegister of trademarks was dismissed. A. Dikigoropoulos for theappellant. St.Ioannidou (Mrs.), for therespondents. !' Cur. adv. vult. TRIANTAFYLLIDES P.Thejudgment of the Court will be delivered by Sawides, J. SAVVIDES. J.: This is an appeal from thejudgment of a Judge of this Court sitting in the first instancein theexercise of , the original jurisdiction of the Court whereby he dismissed the recourse of the appellants challenging the decision of the respondentRegistrar of TradeMarkstoacceptregistration of their trade mark "Tropical Blencr". (See Plough Inc. v. Republic

(1985)3 C.L.R. 1687). The facts of the case are briefly as follows: Appellant, an American company,manufacturers of cosmetics, applied onthe 17th March,1983for theregistration of theirtrademark "Tropical Blend" under class 3, Part A of theregister as a trade mark for their products.About a monthlater registration was refused on the groundthat: * Reported in

(1985)3 CL.R.

1. 148 3 C.L.R. Plough Inc.Republic SavvidesJ. (a)Themarkwas immediatelyconnectedwith thecharacteror quality of theproducts and (b)itlacked distinctiveness. 5 n Objection wasalsoraised toitsregistration unders.13of the TradeMarksLaw, Cap. 268 onthegroundthatin was likely to causedeceptionorconfusion astoitsuse. In response to an intimation by the respondent that the appellants could, under regulation 32 of the Trade Marks Regulations 1951-1971, seekahearingif theywanted topursue the application further, the appellants filed a reply to the objections raised to the registration of the said trade mark, accompanied by an affidavit sworn by their Vice-President, a tableoftheannualsalesoftheirproductsinrecentyearsandalist of Commonwealth Countriesin which registration of themark was accepted.Appellants signified readiness todisclaim "blend" aswellastoacceptregistration in Part Βof theRegister. Appellants alsostressedthelongassociationof theabove mark with their products and the upward trend of their trading in Cyprus. 20 25 30 By letter dated 20th December, 1983, the respondent communicated to the appellants his decision refusing the registration of such mark. By a subsequent letter dated 18th February, 1984, he gave the grounds of his decision which in fact werethesameasthoseembodiedinhisoriginal objection to theregistration.Hisreasonforfinding.lackof distinctiveness was based, asexplained by him, onthegroundthat"TropicalBlend" connotesprimarily association with thetropicswhich innoway isdiminishedby the additionoftheword "Blend".Therefore, the markwas notcapabletodistinguish the appellantsproductsin the mannerenvisagedby s.11andfor muchthesamereasonsit was notcapableof distinguishing theirgoodsfromothergoods inthe tradeinordertojustify registration unders.
2. Furthermore, there was serious likelihood for deception or confusion resulting from theuse of themark thatsuggestedan association of theproducts with the tropics whereas they had 149 Savvides J. Plough Inc. v. Republic

(1988)none. As a result the appellants filed recourse No. 115/

1. challenging theabovedecision. The learned trial Judge came to the conclusion that the objections raised by the Registrar for the refusal of registration weresound and that thedecision reached wasreasonably open to himanddismissed the recourse. A ground which was argued at length before the trial Court was based on the allegation that the Registrar failed toapply the provisionsof theParis Convention for theProtection of Industrial Property, as subsequently revised, which was ratified by Laws 63/65and 66/
2. 5 ^ The learned trialJudge found asfollows on thisground (atpp. 1691-1692): "Thefirst ground upon which the decision ischallenged is 1* based on the Paris Convention for the Protection of Industrial property, as subsequently revised, a part of our domestic law by Laws 63/65 and 66/83, and failure on the part of the Registrar toapply it tothefacts of the present case. Inasmuch asthetrade mark presently underconsideration wasregistered 20 in the United States, a signatory and adherent to the Convention, the Cyprus authorities were, in thecontention of applicants, bound toregister itinCyprus byvirtue of Art.6.1 of the Convention. No such obligation was cast on the Registrar. As counsel for therespondents rightly pointed out 25 inhersupplementary address,theabove submission restsona misconstruction of the Convention. Thereservations madein SB2ofArticle6makeregistration largely amatterof domestic law and preserve distinctiveness as the hallmark for registration."* *
3. See the explanatory note to the application of the Convention by professsor G.H.C. Bodenhausen, Director of BIRPI p. 116; it is explained that registration mayberefused if the proposed mark ispurely descriptive. Also see Kerley's Law of TradeMarks and Trade Names, 10th Ed., pp.499 -500 summing up the effect of theConvention on theEnglish Law. 150 30 3 C.L.R. 5 10 ,c Plough Inc. Republic Sawides J. In contesting the finding of the trial Court on this ground counsel for the appellants submitted that the trial Judge misinterpreted the provisions of the Paris Convention for ihe Protection of Industrial Property and that he wrongly arrived at theaboveconclusion. The said Convention was ratified and became part of our domestic legislation by the Convention for the Protection of Industrial Property (Ratification) Law of 1965 (Law No.63/65). Itisclearly provided byourConstitution, underArticle 169.3that treaties, conventions and agreements concluded in accordance with theprovisions of paragraphs 1 and 2of the said Articlehave as from their publication in the official Gazette of the Republic superior force to any domestic law on condition that such treaties, conventions and agreements are applied by the other party thereto. Thequestion of reciprocity in this case is not in issue as from whatemanates from theaffidavit filed on behalf of the appellants the United States of America is a party and applied the Convention. 20 25 30 Article 6quinquies,of theConvention readsas follows: "A.-

(1)Every trade mark duly registered inthecountryof origin shall be accepted for filing and protected in itsoriginal form in the other countries of the Union, subject to the reservation indicated below in the present Article. These countries may, before proceeding to final registration, require theproduction of acertificate ofregistration in thecountry of origin, issued by the competent authority . No authentication shall berequired for this certificate.

(2)The country of theUnion where theapplicant hasareal and effective industrial or commercial establishment, or, ifhe has not such an establishment within the Union, the Union country where he hashisdomicile or, if he has nodomicile in theUnion, thecountry of hisnationality if heis anational ofa 151 Savvides J. Plough Inc. v. Republic

(1988)Unioncountry shall beconsidered hiscountryof origin. B.Trademarks underthepresent Article may notbedenied registration orcancelled except inthefollowing cases:

1. When they are of such a nature as to infringe rights acquired by third parties in the country, where protection is 5 claimed.
2. When they have no distinctive character, or consist exclusivelyof signsorindicationswhich may serveintradeto designate the kind,quality,quantity, intended purpose,value, place of origin of the goods or time of production, or which 10 havebecame customary inthecurrent languageor inthebona fideandestablished practices of thetrade inthecountry where a protection is sought.
3. When they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is 15 understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of thelaw relating totrademarks,except where such provision itself relatesto". The aforesaid is, however, subject to Article 10 bis of the 20 Convention which stipulates that the Convention countries are bound to assure the persons entitled to the benefits of the Convention aneffective protection against unfair competition. Section 11of theTrade Marks Law, Cap.268,reads"11.

(1)In orderfor atrademark toberegistrable inPart A 25 of the register, it must contain or consist of a least one of the following essential particulars: (

1. a)The name of a company, individual, or firm, respresented inaspecialorparticularmanner, 152 3. C.L.R. Plough Inc. v. Republic Savvides J. (
2. b)the signature of the applicant for registration or some predecessor inhis business; (c)aninvented word orinvented words; 5 10 (
3. d)a word or words having no direct reference to the characterorquality of the goods, andnotbeing according to itsordinary signification ageographical nameorasurname; (
4. e)any other distinctive mark, but a name,signature ,or word or words, otherthan such as fall within thedescriptions in the foregoing paragraphs (a),(b),(
5. c)and (d),shall not be registrable undertheprovisions of thisparagraph exceptupon evidence of its distinctiveness." Section 13of theLaw reads:- 15 "13.Itshall notbelawful toregister as atrademarkorpart of a trademark any mattertheuse of which would, by reason of its being likely todeceive orcause confusion or otherwise, be disentitled toprotectionin acourt of justice, or would be contrary tolaw ormorality,or any scandalous design." 20 A comparison of Article 6 quinquies of the Convention with sections 11 and 13 of the Trade Marks Law and its effect upon such provisions has been madeby A. Loizou,J.in thecase of E. Merck v. The Republic

(1972)3 C.L.R. 548 at pp. 561, 562 as follows: yc 3 ^ "It appears from acomparison of theaforesaid texts that the requirements under sections 11 and 13 of the Trade Marks Law totheextent thatthey have been invoked by theRegistrar in arriving at thesubjudice decision and which are similar to the corresponding provisions of the Trade Marks Law obtaining in England,are notinconflict with the reservations in Article 6quinquies paragraph Βof the Convention. As pointedout in Kerly's Law of TradeMarks andTrade Names,9thEdition,paraghaph 964, p.510153 SavvidesJ. Plough Inc.v.Republic

(1988)'Article 6 quinquies states every trade mark duly registered in its country of origin shall be admitted for deposit and protected in its original form in the other countries of the Union, subject to certain reservations. Thesereservations refer tomarkswhich havenodistinctive 5 character and marks which are contrary to morality or public order.' And thenitsays: ' the requisites for registration provided under sections 9, 10, 11,and 12of theTradeMarks Act, 1938, 10 will in nearly all cases coincide with the provisions of article6of the Convention'. Theconditions forfilinga registration of trademarks are left tothedomesticlaw by Article 6.1 of theConvention, and such a law is valid totheextent thatit does notoffend the 15 provisions of the Convention. In thepresentcase,thegrounds uponwhich theRegistrar of Trade Marks refused registration of the trade mark in question,coincide with theprovisions of Article 6 quinquies of theConventionandthereservations laiddowninparagraph 20 Β thereof. There being no. conflict between the law andthe Conventioninthisrespect,thisgroundof law mustfail." We are in agreement with theopinionexpressed above. We agree also with the findings of the learned trial Judge in the present case on this issue. Inthe result this ground of appeal 25 fails. Counsel for theappellants further contendedthatthelearned trial Judge was wrong inaffirming the decision of theRegistrar. on thegroundsof lack of distinctiveness andthelikelihood of deception undersections 11and 13ofthe Law andhisrefusal to 30 register the trade mark in part;"Β underisr. 12. Jie further submitted thattheRegistrar whosedecision was affirmed by.the \ : 154 3 C.L.R. 5 10 15 20 2-r ~j 3$ Plough Inc. v. Republic Savvides J. trial Court was wrong as hehad failed topay due cognizance to the fact of the long and extensive use of the trade mark in question and the fact that the mark had been accepted for registration and was in fact registered in a number of Commonwealth and other countries having a similar law and procedure asin Cyprus. The question of distinctiveness and direct reference to the character andquality of thegoods under s. 11,registrability of a mark under s. 12 and the possibility of deception or confusion under s.13 of the law as well as theprinciples underlying them havebeen considered inanumberofcasesof thisCourt in which the English Case Law on the matter has been reviewed and we need not repeat them. (See,inter alia, E. Merck v.The Republic (supra); Curzon Tobacco Co. Ltd. v. The Republic

(1975)3 C.L.R. 363, and on appeal

(1979)3 C.L.R. 151; Stavrinides Clothing v. The Republic

(1983)3 C.L.R. 98; Peletico v. Registrar ofTradeMarks

(1986)3C.L.R. 490;SocieteNationale ElfAquitaine v.The Registrar of Trade Marks

(1987)3 C.L.R. 1420; Blue Bell Inc v. The Registrar of Trade Marks

(1987)3 C.L.R. 542; American Telephone and Telegraph Co. v. The Registrar of Trade Marks

(1987)3 C.L.R. 1966; White Horse Distillers Ltd. v. El Greco Distilles Ltd. and Others

(1987)3 C.L.R. 531. Thelearned trialJudge in dealing with themeritsof the case hadthistosay atp. 1693of thejudgment: "Finally, therecourse is directed against the merits of the decision, i.e. the propriety of the negative decision of the Registrar. Not only applicants failed to persuade me that the decision is for any reason erroneous,but at theend of theday Ivery much feel the decision of the Registrar was inevitable. RightlytheRegistrar found that theproposed trade mark does notqualify underanyoneoftheseparatecriteria for registration listed in s. 11

(1), Cap. 268, and cannot for that reason be registered. The separate tests for registration laid down in s. \1

(1)have one characteristic in common, the mark must be 155 l SavvidesJ. PloughInc.v.Republic

(1988)distinctive.As indicated Tropical'isprimarily adescriptive word lacking the necessary element of distinctiveness. The wordisequally apttobringtomindtheplaceoforiginofthe goods.Forthatreasonthewordisinherentlylikelytoleadto deception and confusion as noted by the Registrar. Consequently, the word 'tropical' with or without the accompaniment of 'blend' is not registrable for lack of distinctiveness under s.11, while its registration is also prohibited under s.13 making unlawful the registration of marks likely to deceive orcause confusion. Also the word 'tropical' with or without 'blend' is neither designed nor adapted to distinguish thegoods of the applicants from the goodsof othertraders,itdoesnotqualify forregistration in Part'B'oftheRegister.Anelementofdistinctivenessisalsoa requisiteofregistrabilityunder,s.12". Wearein agreement withtheprinciplesemanatingfrom the aforesaid casesand with theabovefindingsof thelearned trial Judge. Counsel for appellantsfurther argued that theregistration in Commonwealth andothercountriesisanindirectconsiderationto which the Registrar should have referred in view of the provisions of s. 11

(3)(b), Cap. 268 which provides that circumstancesotherthanthoseenumeratedins.l1 maybetaken intoaccountifbecauseofitsusethetrademarkisinfactadapted todistinguish. In dealing with a similar argument advanced bycounsel for appellantsthelearned trialJudgeconcludedthatthelawdoesnot in terms make registration in other countries a consideration relevanttoregistrationinCyprusandintheabsenceof sufficient particularstoilluminatethebackgroundtoforeign registrationthe factorofforeignregistrationwasinconsequential. The.questionofregistrationofamarkinaforeign countryand thebearingof suchregistration inproceedingsforregistrationin Cyprusaswellaswhetherthe markiscapableofdistinguishing 156 3 C.LJL 5 1ο PloughInc.v.Republic SavvidesJ. the goods covered by such mark in this country has been consideredinthecasesofSocieteRationaleEtfAquitaine(supra) and American Telephone and Telegragh Company (supra) in whichreferencehasbeenmadeinthisrespecttotheEnglishCase Law andtoKeriy'sLaw onTradeMarks andTradeNames,12th Ed.inwhich the principlewas adoptedthatforeign registrations areof noconsequential significance. InKerly' sLaw of Trade Marks andTrade Names(supra) atp. 123,paragraph 8-67 we read: "Useofregistrationabroad. Onanapplication toregister amarkfor use inthe United Kingdom,itis distinctiveness intheUnitedKingdom thatis inquestion.Thus extent of registration anduse of themark abroadareof secondary significance, if any." 15 20 25 30 Useful reference maybemadeinthisrespecttothedecisionin Needle-Tip Trade Mark [1973]R.P.C. 113 andinparticularthe followingatp.l18: "It seems to me thatthemere fact thata markhas been registered in a foreign country has little or no bearing on whetherthemarkiscapableofdistmquishing thegoods ofthe applicantinthiscountry .Registration intheforeign country willhavebeenallowedaccordingtothelaw andpracticein that country which may differ from thatof thiscountry andmay havebeenallowedinthelightofparticularcircumstancesand trading conditions in that country and which may be very different tothose obtaininginthiscountry.Itmaybethat, ina casewhereamarkappliedforherehasalreadybeenregistered inaforeign countrywithasystemof trademarklaw similarto ourown,if awrittendecisionof theforeign tribunalallowing registration in the foreign country and which showed the grounds of the decision and the matters taken into consideration weretobe adducedontheapplication here, it mighthepersuasiveasapieceof reasoning astowhetherthe mark should be registered here, if, but only if , similar 157 SawidesJ. PloughInc.v.Republic

(1988)considerationsappliedinthiscountry;butthat,itseemstome isasfarasregistrationinaforeigncountrycouldberelevantto registrability here. It is to be noted that in Swifts case the Divisional Courtwasinfluenced bywhatwasreferred toas'a scholarly and persuasivejudgment of theFull Courtof the 5 High CourtofAustralia'.Onthepresentappeal,however,all thathasbeenrelieduponisthemerefactofregistration inthe , countries mentioned and that mere fact, as I have already stated,isoflittleornobearingonwhetherthemarkiscapable ' ofdistinguishingtheapplicantsgoodsinthiscountry." 10 The learned trial Judge, therefore, rightly came to the conclusion that in the absence of sufficient particulars to illuminatethebackground toforeign registration thedecisionof Registrarwasproperlytaken. Wecomenexttothequestionoftheuseofthetrademarkin j * question inCyprus. CounselfortheappellantcontendedthattheRegistrarfailed to pay due cognizance to such fact. The affidavit of the VicePresident of the appellants in which the allegation of longand extensive useofthetrademarkinCypruswasmadewasbefore ^n the Registrar and waspart of thematerial which theRegistrar tookintoconsideration in reachinghisdecision.Though itisa matterwhichmaybetakenintoconsideration bytheRegistrarin reaching his decision it is not by itself a criterion which may weigh thescalesin favour of theregistration ofthetrademark. However, undue weight cannot be given to such element to overweigh therequirement unders. 11fordistinctivenessof the markinquestion. InthecaseofThePerfection [1909]R.P.C,vol.26,p.561in which therefusal of the Registrar to register thetrade markin question was in issue, Swinfen Eady, J., in considering an appeal and after havingdealtinhisjudgment with theevidence adducedastotheuser ofthetrademarkinquestion inEngland, concluded asfollows, atp.587: 158 3C.L.R. 5 PloughInc.v.Republic SavvidesJ. "Consideringtheevidenceasawhole,Ihavecometothe conclusion thatthewordperfection isnotadistinctivemark, andisnot adaptedtodistinguish thegoodsoftheApplicants from the goods of other persons. I have taken into consideration theevidenceofuser,andstillamofopinionthat the word is not adapted to distinguish the goods of the Applicants". Theapproach ofourSupremeCourtastowhenCourtshould interfere with an administrative decision regarding the 10 registrabilityofatrademarkhasbeenrecendyreviewed bythe FullBenchinRevisionalAppealNo.505WhileHorseDistillers Ltd.v. ElGreco DistillersLtd. andothers (supra)in which it washeld that the Supreme Courton thebasisof theprinciples governing the exercise of itsjurisdiction as an administrative Courtinthefirst instanceandonappealdoesnotinterferewithan administrativedecisionregardingtheregistrabilityofatrademark if such decision wasreasonably open totheRegistrar of Trade Marksanditdoesnotsubstituteitsownevaluationintheplaceof thatoftheRegistrar. 20 In the present case, on the material before us and having carefully considered thereasonsgivenbytheRegistrarofTrade Marksforrefusingtheregistration ofthetrademarkinquestion wehavecometotheconclusion that itwasreasonably open to himtodecideashedidandthatthelearnedtrialJudgewascorrect inaffirming hisdecisionanddismissingtherecourse. 25 Intheresultthisappealfailsandisherebydismissedbutinthe circumstanceswemakenoorderforcosts. Appealdismissed. Noorderastocosts. 159