3 C.L.R. 1988February18 [LORIS,J.] INTHEMATTEROFARTICLE 146OFTHECONSTITUTION OASIS, Applicant, v. THEREGISTRAROFTRADEMARKS, Respondent. (CaseNo. 674/84). Generalprinciples—Referencetoalaw—Presumptionthatitincludesreference to anyamending laws. Due inquiry—Trademarks—Registration of—Burden toadduce material before theRegistrar—Registraractingonthematerialactuallyadducedbefore himby theapplicants, who did not raise any objectionwhen the decision wasreservednordidtheyapplyfor anadjournmentinordertoproduceadditionalmaterial—Applicants cannotcomplainfor insufficientinquiry, Judicialcontrol—Trademarks—Registrabilityof—Priciplesapplicable. 10 15 20 The respondent refused registration of the word "OASIS"h. * trade mark inclass 32for beer,ales,porter, mineraland aerated waterando*>"-r non alcoholic drinks, syrups and otherpreparations for making drinks,on account of the provisions of section 14
(1)of theTrade MarksLaw, Cap. 268,becauseof itsresemblance with trademark "Assis"for such products as aforesaid. Insupportofapplicants'casecounsel for applicants put forward certain allegations,whichhowever, hadnotbeenplacedbeforetherespondentand contended thatthefailure of theAssistantRegistrar towail for him tohave. ananswerfrom hisclientsbefore proceeding todecidethecaseshows that shedid notconductadueinquiry in thematter. Moreover counsel for applicants suggested,interalia, thatthe reference to "theprovisionsofsection 14
(1)ofCap.268"isnotaccurateand may be 291 Oasis v. Reg.of Trade Marks
(1988)fatal tothewholecase,sincetoday'sLawofTradeMarksisnotonlyCap. 268,butalso,subsequentamendingLaws. Held,dismissingtherecourse:
(1)Section 14
(1)ofCap.268hasnever •namended.Inanyevent,itispresumedthatreferencetoalawincludes ofitsamendinglaws. 5
(2)Theburdenwasontheapplicantstoproducesuchmaterialastosatisl theRegistrarthattheproposedmarkshouldbeaccepted.Inthiscase, the. pplicanis,didnotraiseanyobjection whentheRegistrarreservedthe decision nordid theyapply foran adjournment inorder toproduceadditional material.Therefore, theycannotnowcomplainthattheRegistraract- j Q edoninsufficient material.
(3)ThisCourtdoesnotinterfere withadecisionregardingtheregistrabilityofatrademark,ifsuchdecision wasreasonablyopentotheRegistrar,inthiscasetherespondentconductedadueinquiryinordertoascertain thematerialfactsandthereafterdulyappliedthelawtothefacts,reachingat thesub-judicedecisionwhichcannotbefaulted. 15 Recoursedismissed. Noorderastocosts. Casesreferredto: Beecham GroupLtd. v. Republic
(1982)3 C.L.R.622; 20 White HorseDistillersLtd. v.El GrecoDistillersLtd.
(1987)3C.L.R. 531; PloughInc. v.Republic
(1988)3C.L.R.145; Jellinek'sApplication [1946]63R.P.C. 59. Recourse. 25 Recourse against the refusal of the respondent to register the word "OASIS" as a trade mark inclass 32 for beer, ales and porter, mineral and aerated water and other non alcoholic drinks, syrups and other preparations for making drinks. Chr. Theodoulou, for the applicants. 292 ~0 3 C.L.R. Oasis v.Reg.of Trade Marks St.Joannides (Mrs), for the respondents. Cur. adv. vult. 5 10 15 20 LORIS J. read the following judgment. By means of the present recourse the applicants, a company registered in France, challenge therefusal of therespondent Registrar ofTradeMarks, acting through theAssistant RegistrarofTrade Marks,toregister theword "OASIS"asatrademark, inclass 32,for beer,alesand porter, mineral and aerated water and other non alcoholicdrinks, syrupsandotherpreparations for makingdrinks. Therelevant application wasmadeon behalf of the applicants on 28th July 1983and on 13th August 1983,it was objected to by the respondent on account of the provisions of section 14
(1)of the Trade Marks Law, Cap. 268, because of its resemblance with trade mark "ASSIS", registered already in class 32, for beers, ale and porter, mineral and aerated waters and other nonalcoholic drinks,syrupsandotherpreparations for making beverages. On21March 1984counsel for theapplicantsfiledareply contending that trade mark "OASIS" has no similarity with trade mark "ASSIS"eitherphonetically oroptically and that thegoods are different. 25 Asitwasfound thattheobjection could not bewaived thecase was fixed for hearing which was held on 27 September
- During such hearing counsel for the applicant stated that though hehad written totheapplicants since 27July 1984 hedid notreceive a reply and submitted that the two marks do not resemble each otherandthat theproposed mark could beregistered bygivingnotice totheproprietorsof themark "ASSIS". 30 On 9 October 1984 the Assistant Registrar, who heard the case,decided that theobjections could notbewaived andcommunicated such decision tocounselon 16October,
- 293 Loris J. Oasis v.Reg.of Trade Marks
(1988)Upon a request, in this respect, dated 8 December 1984, the Assistant Registrar gave her written grounds for the decision on 26 February, 1985. By means of his written address counsel for the applicants submitted that the Registrar's reference tothe Law, namely "the 5 provisions of section 14
(1)ofCap. 268"isnot accurate and may be fatal to the whole case, since today's Law of Trade Marks is not only Cap. 268,but, also,subsequent amending Laws. With respect tocounsel,thereference by theRegistrar tosection 14
(1)of Cap. 268 is more than accurate since section 14
(1)10 has never been amended, but, in any case,it isalways to bepresumed, without need for so stating, if it is not otherwise necessary,that reference toaLaw included, also,any of its amending laws. Coming to themeritsof thecase,counsel for applicants main- 15 tained that the two marksdo notresembleeach other, asthey are different both optically andphonetically, and also,thatthe goods are different. He further stated that the mark "OASIS" is a world famous product and world famous mark within themeaning of Article 6 20 (bis) of the Paris Convention for the Protection of Industrial Property, which has been made part of our domestic Law by Laws 63/1965 and 66/1983; that the applicants have sold in France and in other countries products in the class of the mark amounting to350million French Francs andthatthey havespent 25 for publicity 30 million French Francs worldwide and that in Greece thewell known company IONSAwithdrew theregistered mark OASIS for itsproducts after the deposit of themark of the applicants. These last statements were never placed before the Assistant Registrar but before theCourt for thefirst time andcounsel contended thatthefailure of theAssistant Registrartowait for him to have an answer from his clients before proceeding todecide the 294 30 3 C.L.R. Oasis v.Reg.of Trade Marks Loris J. caseshowsthat shedid notconductaninquiryin thematter. 5 Q 5 « <- Q Ientirely disagreewith this standof counsel for the applicants because theburden was onhim toproduce such material and to adduceevidence before theRegistrar soasto satisfy him that the proposedregistrationof themark shouldbeaccepted. Inthisparticularcasenoobjection wasraisedby himwhen thecasewasreserved by the Assistant Registrar for decision, no adjournment was sought by him in order to bringbefore the Assistant Registrar any other material substantiating hisclaim and, therefore, he cannotnowcomplain thattheAssistantRegistrarhadactedoninsufficient material,becausetheAssistant Registrar had conducted adueinquiry inthematter, totheextent towhich it waspossible reachingatthesub-judicedecision onthematerial placed before her by counsel for the applicants (vide Beecham Group Ltd. v. The Republic,
(1982)3 C.L.R. 622, 631,632). It is the well established approach of our Supreme Court, on thebasisof theprinciples governing theexercise of itsjurisdiction asan administrative Court, that itdoes not interfere with an administrativedecisionregardingtheregistrabilityofatrademark if such decision wasreasonably open tototheRegistrarof Trade Marks and does not substitute itsown evaluation in theplace of that of the Registrar (vide White Horse Distillers Limited v. El Greco Distillers Ltd.
(1987)3 C.L.R. 531 and Plough Inc. v. The Republic
(1988)3C.L.R. 145. Section 14
(1)of Cap.268,reads as follows: "14
(1)Subject totheprovisions of subsection
(2),notrade mark shallberegistered inrespectof any goodsor description of goodsthatisidentical with atrademark belonging toadifferent proprietor and already on theregister in respect of the same goods or description of goods,or that so nearly resembles such atrade mark astobelikely todeceiveorcause confusion.". The Assistant Registrar having considered, under section 14 295 LorisJ. Oasisv.Reg. ofTradeMarks
(1988)
(1), above,twomainquestions(inJellinek'sApplication[1946] 63R.P.C.59),namely whetherthegoodsfor whichtheregistration wassoughtwereofthesamedescription asanyothergoods for whichamarkhasalreadybeenregistered,andwhetherthere wasalikelihoodofdeceptionorconfusion ofthepublic,decided, g for thereasonsexplainedbyher,thattherewasnoreal difference between thetwomarksbothphonetically andvisually,thatthey could causeconfusion and that the goods in respect of thetwo markswereofthesamedescription. Havingcarefully gonethrough thematerialbefore me,Ihold JQ theviewthattherespondentconducteddueinquiryinordertoascertainthematerialfactsandthereafterdulyappliedtheLawtothe facts,reachingatthesub-judicedecision whichcannotbefaulted. Asregardsreasoning sameappearsclearlyintheadministrativefile, (videreds 19-22inExhibit "X"beforeme)andcounsel 15 forapplicantwasdulyinformed ofsuchreasoningathisownrequest. In the result present recourse fails and is accordingly dismissed;lettherebenoordertocosts. Recoursedismissed. «n Noorderastocosts. 296