clr/1988/1988_3_231.pdf

(1)(d)and(e)and 13of Cap.268. Theapplicantselectedtoanswerbywayofaconsideredreply,whereby they suggested acceptanceof themark in Part Βof theRegister with a 231 Societe D/Hygiene v. Republic

(1988)disclaimerof thewords PICKandOUTseparately. The Registrar examined afresh the matter,but concluded that his objectionscouldnotbewaived. Hencethisrecourse. Applicants compained,interalia, thattheRegistrarcompletely ignored theirsuggestion for registration inPartΒ oftheRegister. 5 Held,dismissing the recourse:

(1)Bearing inmindthe decision ofthe Registrar that he has reconsidered carefully the case in the light of applicants'consideredreply,theconclusionisthattheRegistrarconsidered the mark propounded for registration in Part Β of the register with a 10 disclaimerof thewords "PICK"and"OUT" separately.

(2)Therelevantsectiongoverning registrationsof trademarksinpartΒ of theregister is s. 12of Cap.268. Thedifference between thetworegistrationsis thatinthecaseof PartA registrationthemarkshouldbeinherentlyadaptedtodistinguish thegoods, whereas in thecase of Part Βregistration,themarkshould beinherently capableofdistinguishing suchgoods. Theonus is on theapplicant tosatisfy theRegistrar thatthe mark is capable of distmguishing thegoods. Inthepresentcase noevidence was called before the Registrar in support of the applicants' case. In the circumstancesof thiscase itwas notpossiblewithoutevidence to satisfy theRegistrar that themarkiscapableofdistinguishing thegoods.

(3)The mark also contravenes the provisions of s. 13 of the law because itsuggests thatthegoods concernedpossess qualities (i.e.they pick outthemosquitopricking) whichhave notbeenproved,something which may causeconfusion anddeceptiontomembersof thepublic who may buy these productsbelieving themto be able topick outmosquito prickingwhereastheymaynot.

(4)Applicants'allegation thattheRegistrarfailed togivereasonsforhis objections for registration inPartΒwithadisclaimerof thewords "PICK" and "OUT"separately inPartΒ of theRegister cannotstand, becausethey failed toinvoke theprocedureunders. 19

(4)andask for reasonsofsuch decision.

(5)Thefact of registrationof thewords inquestioninothercountries, 232 15 20 25 30 3 C.L.R. Societe D/Hygiene v. Republic is,intheabsenceof sufficient particulars toilluminatethebackgroundto theforeign registrations,inconsequential.

(6)ThesubjudicedecisionwasreasonablyopentotheRegistrar. Recoursedismissed. Costsagainstapplicants. 5 Casesreferredto: SmitsvonkN.V'sapplication [1955]72R.P.C.117; BeechamGroupv.Republic

(1982)3C.L.R.622; PloughInc.v. Republic

(1985)3 C.L.R. 1687; 10 WhiteHorseDistillersLtd. v. ElGrecoDistillersLtd. andOthers

(1987)3 C.L.R.531; PloughInc.v.Republic

(1988)3 C.L.R.145. Recourse. 15 Recourse against the decision of the respondents whereby applicant's application for the registration in Part B,Clause 5of theRegisterofTrade Marksof thewords "PICK OUT"asatrade mark in respect of products used against the pricking of mosquitoes was refused. G.Platritis,for theapplicants. L. Koursoumba (Mrs,) for therespondents. 20 25 Cur. adv. vult. KOURRIS J. read the following judgment. The present recourse isdirected against thedecision of theRegistrarof Trade Marks, dated 13th March, 1986,whereby herefused applicants' application No. 26758 for registration in part B, class 5 of the words "PICK OUT" as a trade mark in respect of products used 233 Kourris J. Societe D/Hygiene v. Republic

(1988)against thepricking of mosquitoes. The salient facts of the presentrecourse arebriefly as follows:The applicant is a company incorporated in France and on 27.11.85 submitted application No.26758 for registration of the words "PICK OUT"written inplaincapital letters as atrademark 5 in part A, class 9 of the register of trade marks in respect of products against thepricking of mosquitoes (Red6in exhibit 1). On 12.12.85 the application, having been considered by the respondentwas objected toon theground thattheproposed mark contravened the provisions of s.ll

(1)(

1. d)of the Trade Marks 10 Law, Cap.268, in thatit had direct reference to thecharacteror quality of thegoods and it also lacked distinctiveness contraryto the provisions of s. 5 (
2. ii)(
3. i)(
4. e)and also that it contravened the provisions of s.13 as it was likely todeceive orcause confusion. Applicants' attentionwas drawn toRegulation 32 of theTrade Marks Rules 1951 - 1971 by virtue of which they could either apply for ahearing ormake aconsidered reply tothese objections within 2 months(Red7 in exhibit 1). 15 On 7thFebruary, 1986, applicants filed aConsidered Replyin accordance with s.l9

(3)of theTrade Marks Law, Cap.268 and 20 they requested therespondenttohave theirapplication transferred for consideration from Part A toPart B. The Considered Reply reads as follows:"The Registrar by his letter dated 12.12.85 raised objections to the registration of the above trade mark under 25 s . l l ( l ) (d)and (e) and s.13 of theTrade Marks Law. The applicants to whom these objections were communicated allege that the trade mark is good for registration inPartΒ of theRegister and they state thatit was accepted for registration in France, O.A.P.I, Bureau International and Benelux. 234 30 3 C.L.R. Societe D/Hygiene v. Republic Kourris J. Ourselves looking at the case we would suggest the acceptance of the mark in Part Β of the Register with a disclaimer of thewords PICK andOUT separately." 5 10 25 20 25 Itappearsfrom theconsideredreply of theapplicantsthatthey have abandoned their claim for registration in Part A of the register and they requested the Registrar of Trade Marks to examine thecase for registration in Part Β of theregister with a disclaimer of the words "PICK" and "OUT" separately. The Registrar examined afresh thematterin thelight of theconsidered reply and heconcluded thathis objections to the Registration of the mark could not be waived and consequently the application was refused, and on 13.3.86 the Registrar's refusal was communicated toapplicants'counsel (Red 8&9 inexhibit 1). As. a result, the applicants filed the present recourse challenging thesubjudice decision andpraying for itsannulment on theground thattherequest of the applicants for registration in Part Β of theRegister of themark was completely ignored by the Registrar and also that the discretion of theRegistrar of Trade Marks was exercised wrongly. With regard to the first question, counsel for the applicants suggested that there is no reference in the decision of the Registrar either that themark was considered for registration in Part Β of the register or that an objection is made for such registration or the grounds of such objection. Hewent on to say that thedecision of the Registrar clearly refers to his objections for Part A registration and nothing is mentioned of his consideration of whetherthemark could beregistered inPartΒ of the Register and hedoes not mentionif he considered themark for registration in Part Βwith a disclaimer of the words "PICK" and "OUT"separately. Counsel for the respondent contended that the applicants' allegation that the Registrar ignored the applicants' request that themarkbeexamined with aview toitsbeingregistered inPartΒ of theregister is notcorrect. She contendedthat theRegistrar in 235 Kourris J. Society D/Hygiene v. Republic

(1988)all cases of applications for registration of atrademark invariably considers whether the mark proposed for can be accepted for registration in PartΒ of theregister undertheprovisions of s.12 of Cap.268 andafortiori in acase like thepresent,where this was suggested in theconsidered reply of theapplicants and hehad a 5 duty to do so imposed on him by s.19

(3)of the law. She contended that in the present case he had given careful consideration to such a request before reaching the sub judice decision. I have considered carefully the arguments of counsel on this JQ point and bearing in mind thedecision of the Registrar (red9 in exhibit 1)thathe hasreconsidered carefully thecase inthelight of applicant's considered reply, I am satisfied that the Registrar considered themark propounded for registration in PartΒ of the register with a disclaimer of the words "PICK" and "OUT" .<separately. I now propose to consider the matter carefully whether the Registrar was correctinrefusing theregistration of the mark.The relevant section governing registrations of trademarks inpart Β of the register is s.12 of the Trade Marks Law, Cap.268 which -n reads as follows:"12.

(1)Inorder for atrademark to beregistrablein-part Β of the register, it must be capable, in relation to thegoods in respect of which it is registered or proposed to be registered, of distinguishing goods with which theproprietorof thetrade mark is ormay be connectedinthecourse of trade from goods in the case of which no such connection subsists, either generally, or where thetrademark is registered orproposed to be registered subject tolimitations inrelation touse within the extentof the registration.

(2)In determining whether a trade mark is capable of distinguishing as aforesaid the Registrar may have regard to theextenttowhich- 236 <; 2 3 C.L.R. Societe D/Hygiene v. Republic Kourris J. (a)thetrademarkis inherentlycapable of distinguishing as aforesaid; and 5 (b)by reason of theuse of thetrademark or of anyother circumstances, the trade mark is in fact capable of distinguishing as aforesaid." 10 It appears thatthedifference between thetwo registrations is that in the case of part A registration the mark should be inherently adapted todistinguish thegoods, whereas in the case of Part Β registration, themark should be inherently capable of distinguishing such goods. 15 Counselfor theapplicant suggested thatitis notnecessary for an applicant to prove at the time of registration in Part Β the distinctiveness of the mark, and he went on to say that distinctiveness is notrequiredtoexistatthedateof the application if the mark is used long enough, may thereafter become distinctiveof thegoods of theproprietorof themark,andhecited a passage from Kerly on Trade Marks, 10th edn.,para. 8 - 7 3 givingthemeaningof the words "capableof distinguishing". Counsel for the respondent suggested that section 12 of our 20 TradeMarksLaw is anexactreplicaof s.13of theEnglishTrade Marks Act, 1938 and she referred toKerly's (supra)paragraph 8 -72 at p. 153, where it is stated the difference between the registrability of the trade mark in part A and Part Β in the register; and in relation to applications for registration of new 25 . marks as in the present case, the same book, at p. 154 emphasises that the language of s.10 calls for further consideration and in this respect paragraph 8 -73 at p. 155 reads as follows:- 30 "Accordingly, it is notenough for the applicant in such a case to establish that the mark ' may thereafter become distinctive ' of his goods (in Lawrence L. J.'s words): where he cannot point to actual use of the mark (or to ' other circumstances' showing some degree of distinctiveness) he 237 Kourris J. Societe D/Hygiene v. Republic

(1988)must show an inherent capacity for distinctiveness going behond themerepossibility of themark's someday becoming distinctive and there are degrees of inherent capacity Thus a descriptive word was refused registration in Part 5 B, on the ground that its descriptive character made it 'not appropriate todistinguish thegoods of one traderfrom the goods of another, even though therewas evidence suggesting that the mark had since the application to register become distinctive in fact, of which thecourt said 'it is evidence that ,« indicates thatit may turnout in thefuture thatuse will show thatthis word has acquired adistinctivecapacity todistinguish the applicants' goods." However, counsel for therespondentvery fairly conceded that it is notaneasy task for theRegistrar tosay thatby use themark .<will in future become distinctive and he went on the say that Kerly onTradeMarks,8thedn.atp. 139 stated as follows:" while for the part B, such evidence is not required if itis possible withoutevidencetosatisfy thetribunal thatthemarkis capableofdistinguishing thegoods". The onus is on the applicant to satisfy the Registrar thatthe mark is capable of distinguishing thegoods. Inthepresent case no evidence was called before the Registrar in support of the applicants' case and I do not think it was possible without evidence to satisfy the Registrar that the mark is capable of distinguishing the goods; afortiori in thecase in hand, where the markpropounded for registration is directly descriptive ofthe goods, andit is a new mark andnotradehas been established in it (Inthe Matter ofSmitsvonk N.V.'s applicationfor atrademark [1955] 72 R.P.C. 117 at p. 120). Thus, applicants failed to discharge theonuscast uponthemtosatisfy therespondenteither by evidence or otherwise thattheirproposed mark is capable of distinguishing their goods within themeaningof s.12of the law and, therefore, registrable in Part Β of the Register of Trade Marks with a disclaimer of the words "PICK" and "OUT" 238 20 2 ς 35 3 C.L.R. Societe D/Hygiene v. Republic Kourris J. separately. The Registrar in his letter of 12.12.85 objected to the registration of the trade mark on the additional ground that it contravened theprovisions of s.13. ^ Section 13of theTradeMarks Law, Cap.268 reads:- 10 "It shall notbe lawful toregister as a trademark or part of a trademarkany mattertheuse of which would, by reason of its being likely todeceive orcause confusion orotherwise, be disentitled to protection in a Court of Justice, or would be contrary tolaw ormorality orany scandalous design". 15 2o 25 „„ 35 I am of the opinion that the Registrar was correct in that finding because it is evident that the mark also contravenes the provisions of s.13 of the law because it suggests that the goods concerned possess qualities (i.e they pick out the mosquito pricking) which have not been proved, something which may causeconfusion anddeceptiontomembers of thepublic who may buy theseproductsbelieving themtobeable topick outmosquito pricking whereas they maynot. Applicants' allegation thattheRegistrar failed togive reasons for his objections for registration in Part Β with a disclaimer of thewords "PICK" and "OUT"separately inpan Β of the Register cannot stand,because they failed toinvoke theprocedureunder s.l9

(4)and ask for reasons of such decision (See Beecham Group v. TheRepublic,

(1982)3 C.L.R. 622). With regard to the point that the mark was accepted for registration in FranceandBenelux, it does notcarry the case for the applicants any further. The law does not in terms make registration in any other country a consideration relevant to registration in Cyprus. The value of foreign registration lies in large measure in the persuasiveness and the reasoning behind such registration provided always that similar circumstances apply for registration in the two countries. In the absence of sufficient particulars toilluminate the background to the foreign registrations is applicants'mark,theeffect of suchregistrations is inconsequential. (Plough Inc. v. TheRepublic,

(1985)3 C.L.R. 239 Kourris J. Societe D/Hygiene v. Republic

(1988)1687, upheld on appeal

(1988)3 C.L.R. 145. The approach of our Supreme Court as to when the Court should interfere with an administrative decision regarding the registrability of a trade mark has been recently reviewed by the Full Benchin Revisional Appeal No. 505, WhiteHorseDistillers 5 Ltd. v. El Greco Distillers Ltd.and others,

(1987)3 C.L.R. 531. Triantafyllides, P.said thefollowing, at p. 534:"It is the well-established approach of our SupremeCourt, on the basis of the principles governing the exercise of its jurisdiction as an administrative Courtin thefirst instanceand \Q on appeal that it does not interfere with an administrative decision regarding the registrability of a trade mark if such decision was reasonably opentotheRegistrar of Trade Marks and does not substitute its own evaluation in theplace of the Registrar." This decision was followed by thedecision of the Full Beach in thecase of Plough Inc. v.TheRepublic,

(1988)3 C.L.R. 145. 15 In the present case on thematerial before me which was also before the Registrar of Trade Marks, and having carefully considered the contentsof thedecision of the Registrar and the 20 reason for his objections, Ihave come to the conclusion that it was reasonably open tohimtodecide against theregistrability of the trademark in question relying ons.12of the law. Bearing in mind the well established principles that the trial Court does not interfere with decisions of an administrative ^ς organ, nor does it substitute its own discretion for that of the administrative organ if the decision challenged was reasonably open to such organ, I have reached the conclusion that the applicant has failed to show good cause for interference with the Registrar's decision. 30 In the result, the recourse fails and is hereby dismissed with costs in favour of the respondent. Costs to be assessed by the Registrar. Recourse dismissedwithcosts. 240