(1988)1988July 18. [DEMETRIADES,J.] INTHEMATTEROFARTICLE 146OFTHECONSTITUTION FRANCISMONTESINOS INTERNATIONAL S.A., Applicants, v. THEREGISTRAROFTRADE MARKS, Respondent. (CaseNo. 682/84), Trademarks—Registrability—Resemblance with amark already registered likelytodeceiveorcauseconfusion—The Trade MarksLaw,Cap. 268, section 14
(1)—Registrationof"FrancisMontesinos"refusedonaccountof resemblance likely to cause confusion with "MONTEDISON"— ReasonablyopentotheRegistrar. c Thefactsofthiscasesufficiently apearintheJudgmentoftheCourt. Recoursedismissedwithcosts. Recourse. Recourse against the refusal of therespondent to accept the registration ofthename"FrancisMontesinos"asatrademarkin io class25oftheRegisterfor articlesofclothing. Chr. Theodoulou, for theapplicants. St.Ioannides (Mrs.), for therespondent. Cur. adv.vult. 1476 3 C.L.R. 5 / _ Montesinos v. Reg.of Trade Marks DEMETRIADES J..read the tfollowing judgment. By the present recourse thetapplicants challenge thedecision of therespondent dated the,16th October, 1984,by which he refused to accept theapplication of theapplicantsNo.24343for theregistrationof thename "FrancisMontesinos"asatrademarkin.class 25 oftheRegisterfor articlesofclothing. The facts that led tothe present recourse are,in brief, the folowing: 10 15 20 " OQ Onthe 16thNovember, 1983,FrancisMontesinos Intemational S.A:, a company registered in Spain, in accordance with the laws of thecountry, applied tothe respondent, through their advocate Dr. C.A. Theodoulou, for the registration of the name "Francis Montesinos",which iswritten insmallhand-written letters, astrade mark in class 25 for articles of clothing including jackets,trousers,dresses, shirts,T-shirts,jean-style clothing ard footwear. On the 11th January, 1984, the respondent, after considering the application for acceptance objected to its registration on the ground that the proposed trade mark was similar to trade mark No. 15447 MONTEDiSON and device in class 25 and to trade mark No.24273MOCASSINO also in class 25.The application for theregistration of the latter was,however, on the 5th April, 1984,withdrawn and was not later considered by the respondent whenhereachedhisfinaldecision. Onthe28thMay, 1984,theapplicants'counsel filed aconsidered replytotheobjection of therespondent, therelevant partof whichreads: "We submit that your objections concerning the alleged confusibility of our mark with mark no. 15447 Montedison device and mark No. 24273 Mocassino are rather strained. 1477 Demetriades J. Montesinos v.Reg.of Trade Marks
(1988)Ourmarkis notMontesinosbutFrancisMontesinos andthe effect ofthefirstword(FRANCIS)would,inourview,inevitablyavoidanypossibilityofconfusion witheitherofthecited registrations. Even if the word FRANCIS is ignored, the chancesof confusion areminimalinourview.Inparticular, 5 MOCASSINOisvisually andorallyquitedifferent toMONTESINOS;evenMONTEDISONiseasilydistinguishable. Further thegoods aredifferent Concerningboth marksespeciallymarkno.24273Mocassino. Forthesereasonswesubmitthatyoushouldacceptourmark. 10 If, however, you are not satisfied with our arguments could you please fix the case for hearing, if possible, on 27/9/84 whenwehaveothertrademarkhearings." Astherespondentfound thatontheargumentsputforwardby counsel in hisreplyof the28th May, 1984,hecould not waive 15 his objections totheregistration of thetrademark,hefixed the caseforhearingonthe27thSeptember,
- Onthedateofthehearingcounselfor theapplicantsadopted the contents of his reply of the 28th May, 1984, and, further, submitted that a notice be sent toMONTEDISON. He further 20 submittedthatthegoodsweredifferent. Asitappearstherespondentdid notagreewiththesuggestionoftheapplicants'counsel tosendanoticetotheownersofMontedisontrademark. By letter dated the 26th October, 1984, the respondent informed theapplicants'counselthathehadre-examinedtheobjec- 25 tiontotheregistrationofthetrademarkinthelightofwhatcounsel stated during the hearing of the case but he was unable to waiveitandthathewasre-affirming it. Onapplicants'counselrequestforthegroundsofthedecision of the respondent, the latter supplied to him in writing,on the 30 27thMarch, 1985,hissaidreasons,andasaresultthepresentrecoursewas filed. 1478 3 C.L.R. Montesinos v. Reg. of Trade Marks Demetriades J. ,.-.The Law thatprovides for the,registration of,trade,marks is the TradeMarksLaw, Cap.
- Inthepresent case theprovision of thisLaw which isrelevant is section 14
(1)which reads:, • · . . • ' . 5- 10 "Λ/,-. . •,-· . •• .-. I . " : ' Γ ' - ->•' "14.
(1)Subject to the provisions of subsection
(2), no trade mark shall beregistered inrespect of any goods ordescription , of goods thatis identicalwith atrademark belonging to adif ferent proprietorand already on trie-register in respect of the same goods or description of goods, or that so nearly resem bles such atrademark as tobelikely todeceive orcauseconfusion." . ,. ._ ..".'=••• · t ; b In reaching his decision therespondentconsidered two ques tions'which hethoughtthatarose undersection 14
(1)of theLaw, •* namely: 15 20 25 30 1)Are any of thegoods in respect of which theapplicants are seekingregistration the same or of the same description as any goods of anyoneormoreof therelevant trademarks al ready ontheRegister andcited.against thepending applica tion; ' . . , . , · 2) If thisquestion is answered in theaffirmative, whetherpresumirig use of the mark in anormal and fair manner,there will be a reasonable likelihood of deception.or confusion arising among'a substantial number of persons if themark is allowed tobe registered. - . - , . , The,respondent's reasoning in dismissing the arguments put forward by applicants' counsel appear in paragraphs 6 to 10 of thegroundsof hisdecision andarethefollowing: . "6. As far as theadvocate'sfirst pointthattheapplicants'mark "FrancisMontesinos" and"Montedison"arecompletely differ-ent,Ifindnoreal difference between thetwo marks both phoneticallyand visually.Further thenameFrancisin front of the " name Montesinos makes noreal difference to the two words 'Montesinos' and 'Montedison'. The two words Montesinos 1479- Demetriades J. Montesinos v. Reg. Trade Marks
(1988)and Montedison have only one letterdifferent's instead of d and the letters η and s reversed in the last syllable. These do notmakeareal difference tothetwo words,both so nearlyre sembling thatit is likely 'todeceive orcause confusion' under s.!4(l). 5 "
- Concluding I found no real difference between the two marks and themain idea left on themind by both may be the same. "
- As regards thesecond pointraised by theadvocate thatthe goods inrespect of the two marks aredifferent, Ifind thatthe 10 goods are in thesame class 25 being bothfor clothinginclud ing shoes and footwear. "
- Itis clear from theabove classification of the goods of the propounded trade mark and of the cited trade mark that the goods for both,are goods of the same description. 15 "
- As regards the 3rd pointraised by the advocate to serve notice totheproprietorsof thecited mark Montedison,itis im portantthatthepublic should beprotected.Itis notamatterof two similar trade marks tolerating each otherin themarketor even consenting totheuse of each other.If theRegistrar is of 20 theopinionthatthetwo trademarks areidenticalor very simi lar as tocause confusion thentheRegistrar should refuse reg istration of the second mark." The Registrar then made some references both from Kerly's Law of Trade Marks andTrade Namesas well as from decided 25 cases in support of his findings. In Kerly's Law of Trade Marks and Trade Names, 12th ed. paragraph 17-03, p.434, it is stated thattheonus of proof,onan application toregister when theRegistrar objects on thebasis of section 12
(1), (see s. 14
(1)in ourLaw) is on theapplicanttosat- 30 isfy theRegistrar thatthetrademark applied for is not reasonably likely todeceive orcause confusion. 1480 3 C.L.R. Montesinos v. Reg. of Trade Marks Demetriades J. . . - . . . ' • ' ' ' ' ' S Counsel for applicants stated,amongst others,thatthesub judice markis different from thecited one, thatis "Montedison" in thatitconsists of two words andnotmerely and word "Montesino". Underparagraph 17-08 (p.439) of Kerly (supra) it is stated that:, * t >'' 10 •ι t . i '* ' • " * . · •'' > , ' . ' * ' . • ' ' · • * * * '.' "Two marks,when placed side by.side, may.exhibit manyand various differences, yet themainidealeft onthemindby both r may be thesame.A personacquaintedwith onemark,andnot having the ,two side by side for comparison,might.wellbedeceived, if the goods were allowed to be,impressed with the second mark, into a belief thirt heιwas dealing with goods which borethesame mark as thatwith which hewas acquainted." . ν , . · . - . · . And underparagraph 17-11 (p.443):·,; • ,·..· .· -. ^. " 2Q 25 . . . ,o "Thetrademark is thewhole thing -the whole picture has to be considered'.'Theremay be differences in thepart's of each mark, but it is importantto consider the mode in which the partsareputtogetherandtojudge whether thedissimilarity of the partorparts is enoughtomakethewhole dissimilar." Also,underparagraph 17-13 (p. 445) thefollowing is stated: 'It hasbeen acceptedinseveral reportedcases thatthefirstsyl lable of a word mark is generally the most important.It has been observed ih many cases that thereis a tendency of per sons using the English language to slur the terminations of words." In paragraph 17-15 (p. 446) itis statedthat: 30 • "The resemblance between two marks mustbeconsidered with reference to theear as well as totheeye. Whether confusion willarise inthecourseof telephoneconversations mustalso be considered." ,1481 Demetnades J. Montesinos v.Reg.of TradeMarks
(1988)Lastly, inparagraph 17-07 (p.439) of thesamebookitis stat edthat: " it should beborneinmindthatadecision ontheques tionwhetheramarksonearlyresembles anotherastobelikely todeceive orcauseconfusion isnotanexerciseof discretion by atribunalbutafindingof fact." r t Havingcarefully considered themeritsof thecase,inthelight of theiargumentsadvanced bycounselandthegroundsof the de cision of theRegistrar, Ifirid, bearing in mindtheabove, that it was reasonably open totherespondenttoreachthesubjudicede cision andthattheapplicants have shown nocause for meto in terfere with thedecision of theRegistrar. In theresult, this recourseis dismissed withcosts against the applicants. .'.. Recoursedismissedwith costsagainstapplicant. ι.. \i Γ 1482