clr/1988/1988_3_671.pdf

(1988)TradeMarks—The Trade Marks Law, Cap. 268, section 19(1}—Registration in Part Β of the Register—Refusal to register the word DUPLO on the groundthat it mesns DOUBLE and is, therefore, descriptiveof the charac­ ter or quality if thegoods—Complaint as to the respondent's omission to offerRegistration inPart Β apreconditionof theregistrabilityinPart Β is 5 thatthewordinquestionshouldbe "capable ofdistinguishing"thegoods— Inthis casetheRegistrarcorrectlydidnot makesuch anoffer. Theissue in thisappeal,which isdirectedagainst thedecision,whereby therelevant recourse was dismissed, is whetherit was reasonably opento theRegistrar of Trade Markstorefuse registrationof theword DUPLOfor confectionery inClass 30 on theground thatsuch word means, in Italian, DOUBLE,and,is,therefore,descriptive of thecharacter orquality of the goods and apt tocause confusion. The legal principles expoundedby the Court indismissing thisappealareindicatedinthehereinaboveheadnote. 10 15 Appealdismissed. Casesreferredto: Granadav. TheRepublic

(1985)3C.L.R.207; Societe Anonyme v.Republic

(1986)3 C.L.R.356; Arcadian CorporationInc. (No.1)v. TheRepublic

(1986)3C.L.R.2160; PloughInc. v. TheRepublic

(1985)3 C.L.R. 1687; 2 0 PloughInc. v. TheRepublic

(1988)3 C.L.R. 145 ; Solio v.Eastman [1989] A.C. 571; Philippart v. Whiteley [1908] 25 R.P.C. 569. Appeal. Appeal against thejudgmentof aJudgeof theSupremeCourt 25 of Cyprus (Savvides, J.)given onthe8thApril, 1987 (Revisional Jurisdiction Case No. 38/84)* whereby appellant'srecourse against therefusal of therespondenttoregister theword "DU­ PLO" in plain capital letters in PanA of theRegister of Trade Markswas dismissed. -Λ * (Reported in

(1987)3 CL.R. 536). 672 3 CX.R. ' Ferrero v.Reg.of Trade Marks ' GM. Nicolaides, for appellants. ' D.Papadopoullou (Mrs.),for respondents. Cur. adv. vult. 5 10 15 20 25 30 TRIANTAFYLLIDES P.:Thejudgment oftheCourtwill be delivered byPikis J". · PIKIS J.: This appeal is directed against ajudgment of Savvides, J. , dismissing appellant's recourse against a decision of theRegistrar ofTradeMarksrefusing their application for registration of theword "DUPLO"inclass 30(Confectionery, etc.)of theregisterofTradeMarks.ThelearnedJudgesustained thedecision of theRegistrar or,moreprecisely, heheld it wasreasonably open tohimtorefuse registration of thesuggested mark because of the descriptive character of the word (s. 11

(1)(d) Cap. 268), and the likelihood of confusion or deception resulting therefrom contrary to s. 13of theTrade Marks Law.The Registrar had refused theregistration of "DUPLO"on the ground that it wasdescriptiveof thecharacterand qualityof thegoodstobetraded under that name,biscuits, as well as the likelihood of deception or confusion arising therefrom. The trial Court found that theword "duplo" "though not very commonly used in modern Italian, nevertheless, it had a grammatical meaning, that of double". Therefore, he upheld the approach of the Registrar that the numerical connotation imported by the word was descriptive of the character and quality of the biscuits tobe traded under that name. Furthermore confusion as well as deception might result from the likelihood of confusing theproductsoftheappellants with thoseof theircompetitors that had similar properties. Counsel for theappellants strenuously argued that theRegistraracted under amisconception inholding that theword "duplo" means "double"inItalian. Moreover, he wasnotgiven anopportunity tocontrovert this finding of the Registrar, or the meaning 673 PikisJ. Ferrero v.Reg.of Trade Marks

(1988)ascribed totheword byCassell's English -Italian Dictionary (3rd edition).Counsel suggested thattheItalian word signifying "double",currently in use, is "doppio".The word "duplo",on theother hand, though it means "double", is obsolete and is classified by Italian dictionaries of repute as archaic. For the purpose we 5 were referred to the dictionaries of Zingarelli and Mandeson. Nonetheless, no suggestion was made that theword "duplo",archaic though it may be,meansanything otherthan "double";nor does it take a linguistic expert to infer that "doppio" is a modern variation of "duplo".The suggestion, therefore, that theRegistrar ,« misconceived themeaningoftheword "duplo"orthatheattributed toita meaning different from its true meaning, is ill founded. Although correct that the Registrar did not afford a specific opportunity totheappellants tocontrovert themeaningof "duplo",it is evident that use of that opportunity would not have cast adifferent light on the meaning of the word. It is clear on authority thata word does not lose itsdescriptivecharacter by themere fact that it is not in current use;for this to happen the word must be dead (See, Kerly's law of Trade Marks and Trade Names, 12th edition, para 8-30 p. 89). Consequently, the submission that the Registrar misconceived themeaning or implications of the word ^0 "duplo" or that the learned trial Judge misdirected in reviewing this aspect of thedecision oftheRegistrar, cannot be sustained. The next ground taken on appeal is that the word "duplo" is not descriptive of the character or quality of the goods, and as such its registration could not beobjected to by reference to the ^5 provisions of s. 11

(1)(d) of the Trade Marks Law. This subsection of the law allows registration of a word that has nodirect reference tothecharacter orqualityof thegoods.Aword descriptive of either is not registrable unless its association with the 30 product byextensive useoverthe yearscreates such aclose association between the two as to make it distinctive and , as such, registrable under s. 11

(1)(e).The word "duplo"isa numerically descriptive adjective and assuch serves todescribe both thecharacteras well as thequality ofaproduct.Trademark legislation is 35 premised on the proposition that no one should be allowed to monopolise words apt todescribea product. Such words lack the 674 3 CX.R. 5 IQ 25 30 35 Ferrerov. Reg. of Trade Marks PIkis J. element of distinctiveness necesary tosingle out theproductsof one traderfromthoseof another,andprevent unfaircompetition because of the likelihood of deceptionorconfusion. Itis for this reason that words are coined in order toindividualise the brand nameof different products, a process thatrules outthelikelihood of bothconfusion anddeception. As Ihadoccasion toremarkon a number of occasions in the context of discussion of the basic aspects of trademark legislation, distinctiveness is the hallmark of registration under s. 11,as well as thetest of determiningthe likelihood of deception or confusion. (See inter alia Granada v. Republic

(1985)3 C.L.R. 207; Sociele Anonyme ν Republic

(1986)3 C.L.R. 356; Arcadian CorporationInc. (No. 1) v. Re­ public

(1986)3 C.L.R. 2160). The Full Bench of the Supreme Court affirmed this assessment of Trade Mark Law in Plough Inc. v. Republic.

(1988)3 C.L.R. 145; (see also the decision of first instanceupheld on appeal

(1985)3C.L.R. 1687). In appreciating the effect of a foreign word, it is as well to bear inmindtheobservations of Lord Hersc'hell inSolio v. East­ man. [1898] A.C. 571 " Again Ido not think that a for­ eign word is an invented word simply because it has not been currentinour language ". A practical test todeterminewheth­ er aword is distinctive is toask whetheraword conveys an obvi­ ous meaning totheordinary memberof society (this was thetest suggested in Philippart v. Whiteley) [1908] 25 R.P.C.569; See, also, Kerly's Law of Trade Marks and Trade Names, 12th edi­ tion,para 8-30, p. 89).The word "duplo" is of Latin origin and has anidenticalmeaningwith theword "διπλό", aword incom­ mon use in theGreekLanguage. Notonly thetwo words havean identical meaning, but soundwise they are very similar too.In agreement with thelearnedtrial Judge,Iconcludeitwas reasona­ bly open to the Registrar to find that the word "duplo" was de­ scriptive of thecharacterand quality of thegoods.Furthermore, its registration was objectionable unders.13of the law because of the likelihood of deception orconfusion resulting therefrom. As I perceive thelaw, only on therarest of occasions will a wordthat lacks distinctiveness be held to be inoffensive under s.13 of the Law (Cap.268). 675 Pikis J. Ferrero v. Reg. of Trade Marks

(1988)Thelast groundof appealconcernsthefailure of theRegistrar to afford theappellants anopportunitytohave "DUPLO"regis­ teredinPartΒof theregister. Thecomplaintis notthattheRegis­ trarbreachedapositive dutybutthathefailed toexercise hisdis­ cretionalongtheabove suggestedlines. Section 19,subsection 3, 5 confers discretion upon theRegistrar tooffer in anappropriate case theopportinitytotheapplicantof seeking registration in Part Β of theregister as analternative torefusal of theapplicationof registration inPartAof theregister.TheRegistrarwillnotbejus­ tified tooffer this alternativetoanapplicantif of theopinionthat ,Q themarkis notregistrable in PartΒof theregistereither. Counselsubmitted that"duplo"wasregistrable inPartΒ ofthe register and for that reason the Registrar abused his power by omitting tooffer theapplicant thealternativeenvisagedby s. 19

(3)of thelaw. Considerationof the statutory evolution of English law(upon which ourtrademark legislation is modelled)(See,Kerly,supra, para 7 -73, p. 127 et seq) indicates that originally suggested nameswere ratherfreely enteredinPartΒof theregister forthe trialperiodinordertoafford atraderanopportunitytoestablish ~o distinctiveness throughassociation of themarkwith his products. In duecourse thewords "capableof distinguishing" wereadded as aprerequisite for registration inPartΒof theregister, requir­ ing adegree of distinctiveness asapreconditionforregistrationin Part Β of theregister as well. This was recognised by theFull Bench of theSupreme Courtin thecase of Plough Inc.,supra, by adoptingthefollowing passagefrom thejudgmentof thetrial Court as asound assessment of thelaw: "An elementofdistinc­ tiveness is also arequisite of registrability unders. 12".Having regard tothemeaningof theword "duplo"anditsqualities,itwas 30 not capable of distinguishing the goods of the appellants from similar goods of othertraders.HencetheRegistrar didnotfailto afford theappellants anopportunitythattheydeserved under the law tohave theirgoodsregistered inPart Βof theregister. Regis­ trationinPartΒof theRegister was notanalternativeinthemind 35 of theappellants for hadthatbeen thecase theyshould havespe676 ,- 3 C.L.R. 5 Ferrerov.Reg.of TradeMarks PikisJ. cifically appliedfor alternativeregistrationineitherPartAorPart Βof theregister (s. 19

(1)- Cap.268).Ofcoursetheomissiondid notexoneratetheRegistrarfromaffording themsuch opportunity had themerits of thecase so warranted. As it is, theomision of theRegistrar tooffer thealternative was, for thereasons above indicated,justified. We shall,therefore,dismisstheappeal. Appealdismised. 677