(1989)19S9January 26 [A. LOIZOL.P.. MALACHTOS. DEMETRIADES. HADJITSANGAR1S. CHRYSOSTOMIS.NIKITAS.ARTEMIDES. J.J.J AMERICAN TELEPHONE ANDTELEGRAPH COMPANY. Appellants-Applicants, THE REGISTRAR OFTRADE MARKS. Respondents. (Revisional JurisdictionAppeals Kos. 761,762) Trade Marks — Registration — TheTrade Marks Law. Cap. 26S. sections ll(Tj(dj and 13 — TELEPLAS in class 9 for telecommunications equipment andin class 16for printed matter rishtlyrejected. Judicial control of exercise of administrative discretion — Principles applicable. 5 The Registrar of Trade Marks rejected appellants' application for registration of the word TELEPLAN in the aforesaid classes, on the grounds that as the word TELE derives from the Greek word τηλε 10 (which means far,) and as the word PLAN conveys the notion of programme, it had direct reference to the quality or character of goods (section 1 l(l)(djj and.moreover, it may cause confusion (.section 13). The appellants (applicants before the Registrar) filed a recourse to 15 this Court which was dismissed by a Judge of this Court. Hence the present revisional appeal. Held, dismissing the appeal: 20
(1)"Appellants^ contention that as the word TELEPLAN means nothing to the ordinary Cypriot. who is not supposed to be conversed with the English language, the Registrar should not have rejected it and should not have consulted dictionaries, 3C.L.R. Amer.Teleph/Telegr.Co. v. Reg. of Tr. Marks cannot stand, in view of this decision in Merck v. The Republic
(1972)3 CLR.54$
(2)Whether a case is concernedwith Registration in part A or in part Βof theRegister, distinctiveness in fact is not conclusive. There should, also, be distinctiveness in Law (York Trailer Holdings Ltd v. Registrar of Trademarks [19S2] 1 ALL ER 257 at page 260 per Lord Wilberforce.t
(3)Thesub judice decision was reasonably open to the Registrar. The combination of TELE and PLAN describes the natureof qualit> of the goods. TELE is international^ known and examples of its usage ma\ be given by the ordinary man. e.g tcleusion. telescope. PLAN conveys (he notion ot a system. Appeals dismissed. No order its to costs. Casesrelerred to. Merck i. Republic andAnother
(1972)3 CL.R.54S. Soho' case{lS9S]AC
- Plulippart \. Whitely Ltd.(190S]25R.PC
- York TrailerHoldingsLid \.Registrarol TradeMarks \1982}I All E.R.
- InRt l)avis\ TradeMarks. Davis v.Sussex Rubber Co Ltd(192712 Ch.
- Weldincsh TradeMark [1965]R.P.C.
- Re Liverpool Electric CableCo. Lid'sApplications [192S]46 R.P.C.
- Jacoxides v.Republic
(1966)3 CLR. 212. Impajex Agencies Ltd. v.Republic
(1970)3 CLR. 361. Psarasv. Ministry ol Commerce and Industry
(1971)3 CL.R. 151. 123 Amer. Telcph/Telcgr. Co.v.Reg.of Tr. Marks
(1989)Appeals. Appeals against the judgments of a Judge of the Supreme Court of Cyprus (Sawides. J.) given on the 3rd November, 19S7reported in (19S7) 3C.L.R. 1966,dismissing appellants 5 recourses against the decision oftheRegistrar ofTradeMarks to object to two applications for the registration of the word 'Teleplarr asatrade mark inpan AoftheRegister. Chr. Theodoulou. for theAppellants. 10 St. Ioannides. Counsel of the Republic B. for the Respondents. Cur. adv. vult. 15 A. LOIZOU. P.: The judgment of the Court will be delivered byArtemides.J. ARTEMIDES, J.: The appellant-applicant, a company 20 incorporated inU.S.A..appealsagainstthetwojudgmentsofa Judge of this Court, exercising the original jurisdiction of the Court,dismissingtherecoursebymeansofwhichtheappellant impugned the decision of the respondent. Registrar of Trade Marks, hereinafter to be referred to as "the Registrar'. 25 wherebyheobjected totwoapplicationsfiled withhim.forthe registration ol"theword"TELEPLAN"asatrademark inPan Aof the Register. Appeal N.761refers tothe proposed trade mark in Class 9. i.e. in respect of telecommunications equipment, whereas Appeal No. 762to thesame mark but in 30 class 16.that isfor printed matter. In view of the fact that the factual background in the two recourses was almost identical and presented common issues of law. they were heard together but the learned trial Judge 35 delivered twoseparatejudgments.Theexposition ofthelaw is made in recourse No. 9S1/S5 (Appeal 761) and adopted in recourse No.9S0/S5 {Appeal 762).whilst the different factsin the latter case, limited only to the proposed Class of registration, areset therein. 40 The facts leadingtothesubjudicedecision oftheRegistrar 124 3 C.L.K. Amer. Teleph»Telcgr. Co.v. Reg, of Tr. Marks Artemides. J. 5 10 may be summarised as follows: On the28th September. 1984. the two applications for theregistration of theproposed trade name were duly filed by arepresentative of theappellant. The applications, having been considered by the Registrar, were objected to on the 24th October, 1984. The objection was based on theground that the proposed name contravened the provisions of section II(I)(
- d)of the Trade marks Law. Cap. 268. in view of the fact that it had direct reference to the character or quality of the goods and lacked distinctiveness. Funhermore.it was contrary totheprovisions of section 13of the Law as it is likely to deceive or cause confusion. Counsel for the appellant applied, pursuant to the provisions of the Trade Marks Regulations 1951-1984 for a 15 hearing,which was heldon 19.9.1985. The Registrar heardthe submissions of counsel, who had also filed evidence on affidavits but refused to waive his objections and communicated his final decision to the appellant on 11.10.1985. 20 A great number of reasons was included in the notice of appeal but the address of counsel revolved on mainly two general grounds, in such away that theirexposition resultedin a rehearing of the recourses before us, since the same 25 argument had been advanced at first instance and the trial judge dealt at length with each and everyone of the issues raised by the Appellant for the annulment of the sub judice decision. Thesegrounds are that: (a)thelearned trial Judgehas failed to deal adequately with the argument of counsel that the 30 decision of the Registrar was not duly reasoned and (
- b)the findings of the trial Coun are erroneous in law. 35 40 With regard to (
- a)the contention of counsel is totally unfounded. The trial Judge says explicitly in his judgement that he had examined carefully the reasons given by the Registrar for hisobjections, totheproposedtrade name,which appear in his letters of 24.10.1984, to the appellant. Although these letters are in printed form, yet they contain the reasons for the decision of theregistrar, who supplemented theminhis own handwriting. Funhermore,therespondent makes specific reference to the relevant sections of the law. on which his decision is based, thus ζίνιηςfull noticeto the appellant of the Artemides.J. Amer.Teleph/Telegr. Co.v.Reg.of Tr. Marks
(1989)reasons of hisdecision anditisinfact on thosethat thecases. both inthisCoun andbelow,havebeen argued. The Registrar gave identical reasoning for hisobjection to the two applications, namely that the proposed name 5 "TELEPLAN"haddirect reference tothequality orcharacter of the goods and that it also lacked distinctiveness. Funhermore. it contravened the provisions of section 13 of the Law. TheRegistrar refers alsotodictionaries toshowthat the word 'TELE" derives from the Greek word "THAE"' 10 which means far and that the word "PLAN" conveys the motion of programme. The trial Judge, as we have already said, has dealt extensively with the principles of law relevant to the matter 15 elaborating on English case Law and the authorities in our country. It wouldhavebeenfruitless repetition on ourpanif we reiterated this ex position of the law. Counsel for the appellant has not referred usto any other principles of law. which werenotbefore thetrial Coun.orhasshown that those 20 have been wrongly applied by it. He in fact repeated his address before the trial Coun. and invited us to arrive at a different conclusion. His main argument being that the word "TELEPLAN"means nothing to theordinary Cypriot. either Greek or Turk, since they arenot supposed to beconversant 25 with theEnglish language. Itwasfunhermore. inappropriate. so the proposition of counsel proceeds, for the Registrar to consult dictionaries inordertoelicit themeaningofthewords "TELE" and "PLAN". In a nutshell, counsel's submission is that theword "TELEPLAN"isan invention of the appellant. 30 This submission, however, is utterly wrong and counsel's perception of the principles of law involved erroneous. The above issue,and all the other points raised in hisaddress,are dealt with in the case of Merck v. Republic and Another
(1972)3 C.L.R.54S.ajudgment ofMrJusticeA.Loizou.ashe 35 then was. now the President of this Coun. who said the following, atpage563, referring next toleadingEnglishcases. "This brings me to the founh ground relied upon by theapplicant totheeffect thatthewordisforeign, that it 40 should not be examined in relation to its foreign meaning, but only whether in Greek it is an invented 126 3C.L.R. Amer.Teleph/Telegr. Co.v.Reg. of Tr. Marks Artemides, J. wordornot. Whether or not a word is an invented word, isof special importance, as only an invented word can be registered. A leading case on the subject, is The Eastman PhotographicMaterialsCo.Ltd. v.TheComptrollerGeneralof Patents,etc..better known as the "Solio" case[1898]A.C.571. Iwouldliketorefertothepassage from thespeech of LordMacnaghten.atpage583 "If it is an invented word - if it is 'new and freshly coined' (to adapt an old and familiar quotation) - it seems that it is no objection that it may be traced toa foreign source,orthatitmaycontainacoven andskilful allusiontothecharacterorqualityofthegoods. Idonot think that it is necessary that it should be wholly meaningless". And Lord Herschell at page581said:"Again. I do not think that a foreign word is an invented wordsimplybecause ithasnot beencurrentin ourlanguage. Atthesametime,Iamnotpreparedtogo sofarastosaythat acombination ofwordsfrom foreign languages so little known in this country that it would suggest no meaning except to a few scholars might not beregardedasan invented word". In the "Diabolo"case 42 Philippart v. Whitely Ltd. [1908]25R.P.C. 565,Parker.J.statedthat-"before aword qualified as an invented word, it must not only be newly coined in the sense of not already being current in the English language,but itmust besuch asnot to conveyany obvious meaningtotheordinary Englishman". Itisclearfrom the "SO/JO"and "Diabolo"cases thatthe mere fact that the word exists in a foreign language. whethermodem orclassical,isnotsufficient toexcludeit if itreally isinvented. Yet,thefact thatthewordisaforeign word,doesnotmakeitaninventedword.Itshouldbetaken 127 Artemides. J. Amer.TelephyTclegr. Co. \.Reg. of Tr. Marks
(1989)with the meaning that it reasonably conveys, and in the present case,it cannotbeconsideredas aninventedword." We endorse the above statement of the law. We wish, however, tomakealso aratherextensive reference tothecase 5 of York Trailer Holdings Ltd v. Registrar of Trade Marks [19S2] 1All E.R. 257 in which the House of Lords deals with the fine difference between the provisions of sections 9 and 10 of the Trade Marks Act 1938, which correspondtosections 11and 12of ourlaw. LordWilberforce 10 hadthis to say. at page 260 oftherepon: "Exactly what was the purpose of the firstamendment (i.e. in distinguishing between 'adapted' and 'capable') is not entirely clear: judicial attempts have been made to 15 clarify it. In RE Davis's TradeMarks, Davis v. Sussex Rubber Co Ltd [1927] 2 Ch 345 at 355-356 ('ustikon') Lord Hanworth MR. accepting that 'capable of distinguishing' might indicate a more benevolent testthan 'adapted to distinguish', said that 'capable' might perhaps 20 refer tothefuture, andhis opinionwas sharedby the other members of thecoun.Sargant LJ(at360)andLawrence LJ (at 3636).A moresophisticatedexplanation was offered bv Lloyd-Jacobin WeldmeshTrade Mark[1965] R.P.C.590 at
- I do not think that further analysis of the two 25 expressions is necessary onthis occasion,because it isnot thisthatisthecritical distinctioninthepresentcase. Indeed reliance on it.andon thesupposed greater liberality ofthe work 'capable' as opposed to 'adapted' by the judge constitutes,tomymind, theessential fallacy inhisjudgment 30 andintherespondents'argumentinthisHouse.Evenif s.10 indicated a greater liberality of approach than s.
- it is liberality in a direction which is irrelevant for present purposes." 35 The conclusion in the judgment is that whether a case is concerned with Part A or Pan Β of the Register. distinctiveness infact is not conclusive. Itmust also be soin law. This answers another point taken by counsel for the appellant, namely thattheRegistrar shouldhave informed the 40 appellant whether he also objected to registration in Pan B. The Registrar, however, according to established practice. 128 3 C.L.R. Amer. Teleph/Telegr. Co. v.Reg. of Tr. Marks Artemides, J. would have so informed the appellant if hehad no objection. He has not done so and this means that he also objects to registration inPan Βfor thesame reasons. 5 10 15 20 LordWilberforce continuesfurther down inthe York case. tosav thefollowing,whichsquarelv applv inthepresent: (pa^e 261). "And there can be no doubt that exactly similar reasoning mustbeappliedtothewords (inherentlycapable of distinguishing'in s. 10
(2)(a)of the 1938Act. They mean. in effect 'capable in law of distinguishing', therelevant law being the accepted principle that, in relation to certain words, of which laudatory epithets andsome geographical names were established examples, traders could notobtain a monopoly inthe use of such words (however distinctive) to the detriment of members of the public who, in the future, andinconnectionwith othergoods, might desireto use them" He then makes reference to the case of Re Liverpool Electric Cable Co. Ltd's Applications [1928]46 R.P.C. 99. adopting what Lord Hanwonh said in that case, i.e. the following: 25 30 ".... when you cometo regard therightof the public at large,thetraders atLiverpool andthelike,it appears to me that the Registrar would be quite right in holding that a word of that importance and significance ought not to be used or allowed to be treated as a word capable of distinguishing, because it has not merely to be capable in fact but it mustbe capable in law." In the present case the decision of theRegistrar was open 35 to him on anumberof grounds. The prefix word "TELE"is an internationally known word in wide common use. Examples of itsusagemayeven begivenbytheordinaryman. who knows the words television, telescope, telepathy. telephone, telegram, telex, etc. The word "PLAN" added 40 conveys the motion of a system and the combination of the two words in"TELEPLAN"describes thenatureorcharacter of the goods. That this is so. is explicitly portrayed in the 129 Artemides, J. Amer. Teleph/Telegr. Co.v.Reg. of Tr.Marks
(1989)advertising leaflets filed by theappellant with theRegistrar in the application for thetelecommunications' equipment, which incidentally is not connectedwith equipment only but mainly with services. So. ontheadvertising picture.No.21.inthefile of the applications, it is written: "Teleplan* another quality 5 hotel service for ourguests'" and onpicture 18: "Stay atahotel featuring Teleplan. A program set upby AT &Τthatinsures guests fair and reasonable telephone surcharges on all calls.'' The word therefore is not aninvention of theappellant andif the applications were accepted,thentheappellant would have 10 had a monopoly in the use of the proposed name, a disagreeable situation which thelaw is aiming against. Counsel for the appellant has invited us to depart from english caselaw andapplytheprinciples ofadministrative law. 15 as same have been expounded in awealth of authority of this Court. Again the matter is dealt with in the case of Merck. cited to above, where President Loizou hadthis to saw atp. 564: 20 "Thepoint,therefore,thatarises for consideration,isthe extenttowhichthisCourtwillinterfere withtheexercise of administrative discretion. This matterhas been the subject of judicial pronouncement ina numberof cases (See,inter alia, Jacovos Jacovides v.TheRepublic
(1966)3C.L.R. 25 page212, Impalex Agencies Ltd. v.TheRepublic
(1970)3 C.L.R. 361.and Psaras v. TheMinistry of Commerce and Industry
(1971)3 C.L.R. 151). This Court will not interfere with such adiscretion if dueweight hasbeen given to all material facts, it has not been based on a 30 misconception of law or fact and it was not exercised in excess or abuse of power." This principle is well embedded in our law and remains unchanged. Our country has signed two conventions for the 35 protection of industrial property ratified by TheConvention for theProtection of IndustrialProperty(Ratification)Lawsof 1965 and 19S3 (63/65 and66/S3). if acomparison is madeof the provisions of our Trade Marks Law. Cap. 268. with the above conventions,itwillbeseen thatitis incompleteaccord 40 with them,as again indicated,by A. Loizou,P. in the case of Merck for the 1965 Ratification Law, the only one then in 130 3C.L.R. Amer.Teleph/Telegr. Co.v.Reg.of Tr. Marks Artemides, J. force. Fortheabove reasons both appeals are dismissed butwith noorder astocosts. Appealsdismissed. No order as to costs. 131