clr/1989/1989_3A_791.pdf

(1989)Trademarks — Registration — Distinctiveness — The TrademarksLaw. Cap.26S,section I l(l)(e) -~PartA of theregister— Burdenof proof — After theRegistrar objected on theground thatthemarkinquestion was not inherently adopted to distinguish, such burden shifted to applicants— Extensive referencetoauthorities— Distinctivenessis the hallmark of registrability andthe test for determiningthelikelihood of deception or confusion underseciion 13of theLaw. 5 Trademarks — Registration — Pan Β of register — Practicethat in on applicationfor registration in part A of register, theapplication may be \0 treated as an application for registration inpart β — Registrabilityin Part Β — The TrademarksLaw.Cap. 26S.section 12— Extensive reference toauthorities, Trademarks — Function of trademark — Itis to indicatetheoriginof the \5 goods to which it isapplied— Referencetoauthorities. Trademarks— Registrability— Devicewithoutwording— TheTrademarksLaw, Cap.26S. seciion 2 — Sucha devicefallswithinthe definitionof mark inseciion 2 — But not every mark isregistrable— A markto be 2 0 registrableshouldfulfillthe requirementsof eithersection 11or section 12andnot be contrary to section 13. Trademarks — Registration — Three-colouredlabelsfor cigarettesin class 34 — Confusion — The TrademarksLaw. Cap.26S,section 13— Its 25 ambit is not limited to cases of similarity or competition between the proposed mark andanother mark— Sufficient,if there is an inherent probability of confusion arising from themarkbeing usedιο distinguish two articles,whicharc essentiallydifferentin origin andmay be wholly different incharacterandquality. Reasoningof anadministrativeact— Registration of Trademark— Lackof due reasoning — Ground for annulment— Inthis case thereasoning emerges clearlyfrom thereasonsfor the decisionas thematerialinthe file. 30 35 In this case theapplicants applied for theregistration of a seriesof three-coloured labels trademarks astrademarks under class 34inrespect of cigarettes. 40 The Registrartook objection tothemark inquestion ontheground that itwas notdistinctiveas requiredby section 11

(1)(e)of Cap.268 and 792 3 C.L.R. 5 10 15 20 Carreras Ltd >.Reg. of Trade Marks that it contravened section 13 of the Law. The applicant's advocate informed the Registrar that the mark in question had been accepted in United Kingdom The Registrar eventually accepted the mark lor advertisement, but later on the Registrar revoked the decision under section 21

(1)(b)ol the Law on theground that itwas made inerror The same as afoicsaid original objections were taken anew Following representations by the applicants, the Registrar reached the conclusion that the mark could not be rcgistcied under section I l(l)(c) ot the Law, as it had not become distinctive in tact in Cyprus 1he Registrar further reached the conclusion that the mark could not be icgistcrcd in Part Β under section 12 Intact therclusal relating to Part Βrelied on thesame reasons as therefusal to register it inpart A. Finally the Registrar found that theprovisions ol section 13ot Cap.26S wcie also otlendcd. Hencethis recourse The \anous legal issues raised in this rccoui.se appear sulhciently trom theheicinabovc Headnotcs The Court,in examining the question of distinctiveness as a prerequuemenl ot registrability, relerred to and cued passages Irom thecase law ol English Courts Recourse dismissed Λ'π order as to costs. 25 Casesrelerredto: 1 \VS \'ommce Co. Ltd v.Republic(Registrar ot TradeMarks)

(1967)3 CI R.5S2. 30 Ε Merck \. Republic andAnother

(1972)3C.L.R 54S, WhiteHorse \ El Ciceo

(1987)3CI. R.531. 35 Curzon Tobacco Company Limited v. Republic (OllicialReceiver and Registrarhtc )

(1975)3 CL.R. 361 Kcedie-Ttp TradeMark[1973]RPC 113. Plough. Inc. ν Republic(19SS) 3 C! R 145, 40 ••Wcldmcsh" TradeMark [1965] R P.C 590, 793 Carrcras Ltd v. Reg. of Trade Marks

(1989)IntheMatter of theApplication of Henry QucnncllLd. toraTrade Mark fl954]72R.P.C36, "TheInternationalSociety olPostmasters''Trade Mark[1977]R.P.C 373. 5 Aristoc. Ld. v.Rysta. Ld.U945162 R.P.C. 65. InrePowells TradeMark [IS93}2 Ch. 3SS. BussRatclift'andCretton Ld. v. NicholsonandSonsLd. \I932]A.C. 130. 10 BismagLd. v.Amblins (Chemists)Ld.[194011Ch. 667. Recourse. 15 Recourse against the refusal of the respondent to register a mark of cigarettes in Class34. G.M. Nicokiides,tor theApplicants. 20 St. loannides (Mrs). Counsel of the Republic, for the Respondents. STYLIANIDES.J.readthefollowingjudgment.Bymeansof the present recourse the applicants challenge the refusal of the 25 Respondent - Registrar of Trade Marks, (the "Registrar"), to register a mark for cigarettes in Class34. The applicants, a limited liability company, incorporated in England,on 21st May. 1980.filed an application, undernumber 30 20679 for the registration of a series of three coloured labels trade marks as trade marks under Class 34. in respect of cigarettes. The Registrar took objection to the mark in question by 35 letter of ISth June. 1980.on theground that it isnot distinctive as required by section 1 l(l)(

1. e)of the Trade Marks Law, Cap. 268 (the "Law") and it contravenes section 13 of the Law. The applicants' advocate, by letter dated 30th July, 1980. 40 informed the Registrar that there was a corresponding United Kingdom application, which was advertised on the 18th June. 794 3 C.L.R. 5 Carreras Ltd v. Rep. of Trade Marks Stylianides. J, 19S0, intheUnitedKingdomTrade Marks Journal.No.5310 of ISth June. 19S0. and enclosed a copy of such advertisement. Thereupon, the trade mark propounded for registration in Cyprus was accepted for advertisement and was advertised in the Official Gazette of the Republic, No. 16S0. of 17th April, 1981,Supplement No.5.p.47. On 7th May, 1981. the Registrar by letter informed the applicants' advocate that, after further consideration, the 10 acceptance for advertisement of the mark was revoked, under the provisions of"section 21(l)(
2. b)of the Law, as it was madein error, and thesame original objections were taken anew. The advocate of the applicants applies for a hearing, under 15 Rule 32 of theTrade Marks Rules 1951-71. 20 The applicants did not claim that their mark had. by reason of use or of any other circumstances,in fact become distinctive in Cyprus for their goods, but they based their claim for registration in Cyprus on the fact that it hadbeen acceptedand advertised in theUnitedKingdom. The Registrar took theview thattheregistration abroad isof secondary significance. 25 Having considered themark propoundedfor registration,in the light of theabove, theRegistrar reachedtheconclusion that it was not entitled for registration, undersection 1 l(l)(
3. e)of the Law, as it hadnotbecome distinctive in fact in Cvprus. 30 He. then,considered whether the mark would be acceptable for registration in Part Β of the Register, under section 12. Registration in Part Β was. also, refused, for the same reasons for which the mark was not registrable in Pan A. He decided 35 that the said mark could not be capable of distinguishing those goods from similar goods of other traders, who might wish to use it in thecourse of theirtrade. He.also, found thatthemark offended against the provisions of section 13. because if registered there will be a real danger of confusion among 40 members of the public as to the trade origin of the goods. The grounds of the Registrar's decision werecommunicated 795 Stylianides. J. Carreras Ltd v. Reg. of Trade Marks

(1989)to counsel for the applicants on the 31st July. 1982. and as a result the present recoursewas filed. Rival arguments were advanced on thepowers of this Court in a recourse seeking annulment of a decision of the Registrar. 5 Learned counsel for the applicants, relying on section 50of the Law.which provides that:'"In any appeal from adecision of the Registrar to the Court under this Law.the Court shall have and exercise the same discretionary powers as under this Law 10 are conferred upon the Registrar", section 8

(2)of the English Act of 1919 and section 52 of the English Trade Marks Act. 1938.submitted that this Court has.in exercise of its revisional jurisdiction in trade marks recourses,the power conferred on it bythe aforesaid statutory provision. 15 Counsel for the Registrar, on the other hand, submitted that the powers of the Court, in determining a recourse of this nature, are not different to those for any other recourse, under Anicle 146of the Constitution, and that section 50of the Law, 20 enacted in 1951.ceasedtobeinoperation, underAnicle 18Sof the Constitution. The matter, not only isnot devoidof authority,but there isa plethora ofJudgments of thiscourt on it. 25 Proceedings before the Registrar under the law are of administrative character, notwithstanding their semblance with judicial proceedings. TheRegistrar,intheexerciseofhispowers under thelaw.exercises an administrative authority inthesense 30 of paragraph 1of Anicle 146 of the Constitution for a public purpose inthedomain ofpubliclaw. Adecision ofthe Registrar is an administrative decision in the domain of public law amenable to the Revisional Jurisdiction, introduced in this country by Anicle 146of the Constitution. 35 The pan of section 19.providing for appeal, and the whole section 50of the Law,being inconsistent with a recourse under Anicle 146,were not saved byAnicle 188and are not in force - (/.W.S. Nominee Co.Ltd. v.Republic (Registrar of Trade 40 Marks)

(1967)3 C.L.R. 582; E. Merck v. Republic and Another

(1972)3C.L.R. 54S,at p.557). 796 3 C.L.R. Carreras Ltd v. Reg. of Trade Marks Stylianides, J. The powers of the Supreme Court as an Administrative Coun are well settled. It is a well established approach of our Supreme Court, on the basis of the principles governing the exercise ofitsjurisdiction asan Administrative Coun inthe first 5 instance and on appeal, that it does not interfere with an administrative decision regarding the registrability of a trade mark, if such decision is reasonably open to the Registrar and does not substitute itsown evaluation in the place of that of the Registrar - (White Horse v.El Greco (19S7) 3 C.L.R. 531,at 10 p.534.where the previous Case Law iscited). This Coun does not interfere with the exercise of administrative discretion bytheRegistrar, ifdueweighthasbeen given to all material facts, it has not been based on a 15 misconception of law or fact and it was not exercised in excess or abuse of power -(Merck v.Republic (supra) at p.564). The recourse isbased on the following grounds oflaw:20

1. The Respondent, although he invariably inquires if the proposed for registration mark isregistered in the United Kingdom, assuch registration isof persuasive nature and effect, yet inthiscasehecompletely ignoredsuch existing registration in the United Kingdom. 25
2. The Respondent failed to consider whether the proposed for registration mark was inherently adapted to. or capable of distinguishing the applicants' goods. 30 35
3. The Respondent acted under a misconception of Law and/or fact and misdirected himself and/or proceeded on wrong principles in arriving at hisdecision.
4. The Respondent exercised his discretion wrongly and the subjudice decision isnot duly reasoned. Counsel for the applicants complained that the Registrar. though accepted the trade mark propounded for advenisement, later revoked hisacceptance. 40 The Registrar is empowered by section 21(l)(b) not to register iftheapplication hasbeen accepted inerror. In Curzon 797 Stylianides,J. Carreras Ltd v. Reg.ofTrade Marks

(1989)Tobacco Company Limited v.Republic (Official Receiver andRegistrar Etc.)

(1975)3C.L.R. 363,it wassaidat p.368:"It isquite apparent from thewordingof thissection that the Registrar has power to refuse registration even though 5 the application has been accepted in the first instance and there has been no opposition to the registration if such application has been accepted in enor. It issignificant that under rule 53 of the Trade Marks Rules 1951 entry in the Register after the expiration of two months from the date of 10 the advenisement in the Gazette is made subject to the determination of any opposition and also subject to the provisions of section 21

(1). Funhermore both the initial acceptance and the advenisement of the application are merely interim measures leading to the final act, the 15 registration of the trade mark, and in view of this and of the express provision inthelawitisnot correcttosaythatunder administrative law it was not open to the Registrar to withdraw hisacceptance." 20 It was contended by counsel for the applicants that the Registrar erred in law and acted on wrong principle by not attaching alot of imponance tothefact thatthe proposed mark wasaccepted and/orregistered intheUnited Kingdom,whereas counsel for the Registrar maintained that a foreign registration 25 inaforeign country haslittleornobearingonwhetherthemark is capable of distinguishing the goods of the applicants in this country. Theprovisostosections 11

(1)and 12

(2),whichprovidedthat 30 registration in the United Kingdom in Pan A or Pan B, respectively, together with a representation thereof, shall be prima facie evidence of distinctiveness of such mark, were repealed by section 2 of the Trade Marks (Amendment) Law, 1962 (Law No.63/62). 35 Both sides referred the Coun to the Needle-Tip Trade Mark [1973]R.P.C. 113. TheRegistrar,alsointhe"Groundsof Decision" relied on the same case. At p. 118 of the repon we read:"It seems to me that the mere fact that a mark has been 798 40 3 C.L.R. 5 10 15 20 25 Carreras Ltd v. Reg. of Trade Marks Stylianides, J. registered in a foreign country has little or no bearing on whetherthemark iscapable ofdistinguishingthegoodsofthe applicant inthiscountry. Registration intheforeign country will have been allowed according to the law and practice in that country which may differ from that of this country and may have been allowed in the light of panicular circumstances and trading conditions in that country and which may be very different to those obtaining in this country. It may be that, in a case where a mark applied for here has already been registered in a foreign country with a system of trade mark law similar to our own, if a written decision of the foreign tribunal allowing registration in the foreign country and which showed the grounds of the decision andthematters taken intoconsideration were to be adduced on the application here, it might be persuasive as a piece of reasoning as to whether the mark should be registered here, if. but only if. similar considerations applied in this country; but that, it seems to me is as far as registration in a foreign country could be relevant to registrability here. It is to be noted that in Swifts' case the Divisional Coun wasinfluenced bywhatwasreferred toas 'a scholarly and persuasive judgement of the Full Coun of the High Coun ofAustralia'.Onthepresent appeal,however,all that has been relied upon is the mere fact of registration in thecountriesmentioned andthat merefact,asIhave already stated, is of little or no bearing on whether the mark is capable of distinguishing the applicants' goods in this country." 30 In Plough, Inc. v.The Republic of Cyprus, through The Registrar of Trade Marks

(1988)3 C.L.R. 145itwasheldthat registration of a mark in a foreign country is of no consequential significance in proceedings for registration in Cyprus,aswell aswhetherthe mark iscapable of distinguishing 35 thegoodscoveredbysuchmark inthiscountry. Kerly's Lawof Trade Marks and Trade Names, Twelfth Edition, p. 123. paragraph 8-68, which reads asfollows, was adopted:"Use or registration abroad 40 On an application to register amark for useinthe United Kingdom, it isdistinctiveness in the United Kingdom that is 799 Stylianides, J. Carreras Ltd v. Reg. of Trade Marks

(1989)in question. Thus extent of registration and useof the mark abroad are of secondarysignificance, ifany." In the present case the applicants relied solely on the mere fact of registration intheUnited Kingdom. Nowritten decision 5 was produced to show the grounds of the decision and the matters taken into consideration. No sufficient particulars to illuminate the background to the foreign registration on the decision wereadduced. TheRegistration intheUnited Kingdom wasaccepted without evidence of use.as inherently distinctive. 10 The Registrar didnot misdirect himself as to the law andhis decision on this point was properly taken. The Registrar raised objection that the trade mark in 15 question lacksdistinctivenesscontrary tosection 11(l)(e)ofthe Law. Section 1 l(I)(e) of the Law provides as follows:"11.

(1)In order for atrade mark tobe registrable in Pan Aof the register, it must contain or consist ofat least one of 20 thefollowing essential paniculars:- (e)any other distinctive mark, but a name, signature, or 25 word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b). (c) and (d).shall not beregistrable under theprovisionsof this paragraph except upon evidence ot its distinctiveness:" Sub-section

(2)gives astatutory definition on interpretation of "distinctive"as follows:"

(2)For the purposes of this section 'distinctive' means 35 adapted, in relation to thegoods in respect of which a trade mark isregistered or proposedtobe registered,todistinguish goods with which the proprietor of thetrade mark isormaybeconnected inthecourse oftrade from goods inthecaseof which nosuch connection subsists,eithergenerally or, where 40 the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of S00 30 3 C.L.R. Carreras Ltd v. Reg. of Trade Marks Stytianides. J. the registration." Section 11

(3)reads as follows:5 10 "

(3)In determining whether a trade mark is adapted to distinguish as aforesaid the Registrar may have regard to the extent to which(a)the trade mark is inherently adapted to distinguish as aforesaid: and (b)by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid." 15 The burden of proof, after the Registrar examined whether such mark wasinherently adaptedto distinguish but he objected and refused to register, shifted on the applicants. 20 In Kerly's Law of Trade Marks and Trade Names. Twelfth Edition, at pp. 100-101, paragraph S-43we read:Tnherent distinctiveness 25 30 35 To be inherently adapted to distinguish, a word must be one which,asaword, isadapted todistinguish thegoods,and not a word which may by user acquire the capacity of distinguishing the goods. The Act means that a trader may take awordwhich from something intheworditself -saythe fact that no one had ever heard the word before, that it was an invented word, or that it indicated the particular traderas distinguished from another trader, but always from something found in the word itself as distinguished from the way in which it isused -issuch as to answer the description of being adapted to distinguish the goods.' 'By 'inherentlyadapted' Itake theAct tomean adaptedofitself,standingon itsown feet.' The House of Lords has adopted a somewhat different 40 approach, which seems more appropriate to the evaluation of the factor of inherent distinctiveness incasesofmarks shown to be distinctive in fact: S01 Stylianides, J. Carreras Ltd v.Reg.of Trade Marks

(1989)'However, longbefore thereference to inherent adaptability hadbeen incorporated inthecurrent statutes dealing with trade marks, it had been held upon grounds of public policy that a trader ought not to be allowed to obtain by registration under the Trade Marks Act a monopoly in what other traders may 5 legitimately desireto use. Theclassicstatement ofthis doctrine isto be found in the speech of Lord Parker inthe W. &G. case [1913]430R.P.C. 660 at page 672 where he saidthat theright to registration should largely depend on whether other traders are likely, in the ordinary course of their business and without 10 any improper motive, to desire to use thesame mark, or some mark nearly resemblingit,upon orinconnection withtheirown goods. The reference to 'inherently adapted' insection 9

(3)of the Consolidation Act of 1938.which wasfirst enacted in

1. has always been treated as giving statutory expression to the 15 doctrine as previously stated by Lord Parker.' Thusthemere proof oradmission that amark doesin fact distinguish doesnot ipsofacto compel thejudgeto deemthat mark to be distinctive. It must funher be 'adapted to 20 distinguish,' whichbringswithin thepurview ofhisdiscretion thewider field ofthe interests ofstrangers andofthepublic." In paragraph 8-41,p.99weread:25 "...the Registrar, in considering an application to register a mark, must consider both its inherent adaptation (i.e. aptitude) to distinguish and also the extent to which it is shown by evidence (if there is such evidence) to be distinctive:" 30 The Registrar in the "Grounds of Decision"says:"
2. Having therefore, carefully considered the mark propounded for registration in the light of the above 35 considerations, Ihave come to the conclusions that it is not entitled for registration under the provisions of section 1 l(l)(e) of the Law, as it has not become distinctive in fact, in Cyprus." 40 This finding means that the mark propounded was not entitled for registration under the provisions ofsection 1 l(l)(e) 802 3 C.L.R. 5 Carreras Ltd v. Reg. of Trade Marks Stylianides, J. andthat it has notbecome distinctive. Furtherit implies thatin fact and in substance the trade mark propounded is not inherentlyadaptedtodistinguish undersection 1 l

(3)(a),because if it were found to be inherently adaptedto distinguish it would have fallen within the provisions of the other paragraphs of section 11

(1)andwould have been registered. Distinctiveness is the hall mark of registrability and the test for determining thelikelihood of deception or confusion under 10 section 13of the Law. Counsel for theapplicants argued that theRegistrar failed to examine the possibility of distinctiveness per se. This runs counter to the contents of the file and the "Grounds of 15 Decision". 20 25 He, further, submitted that the Registrar, under section 19

(3)of the Law, in the case of an application for registration of atrademark in Pan A of theRegister, may,if theapplicant is willing, instead of refusing the application, treat it as an application for registration in Part Β and deal with the application accordingly. This is an invariable practice of a Registrar, which it was followed in the present case. It was argued that the Registrar did not apply the proper criterion,as set out in the Law, undersection 12. 30 35 40 Section 12(l)reads:" 12.

(1)Inorder for atrademark tobe registrable inPart Β of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which theproprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered orproposed toberegistered subject tolimitations, in relation to use within the extent of the registration." In Halsbury's Laws of England, Fourth Edition,Volume 48 803 Stylianides. J. Carreras Ltd v. Reg. of Trade Marks

(1989)paragraph

1. we read:"(iii) Registration in Part Β
2. Requirements for registration in Par B. In order for a trade mark to be registrable in Pan Β of the register it must be capable, in 5 relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connectedin the course of trade from goods in the case of which nosuch connection subsists, either generally or. where the trade 10 mark is registered or proposed to be registered subject to a ' limitation, in relation to use within the extent of the registration. Indetermining whether atrade mark is capable of distinguishing as aforesaid thetribunal may have regard to the extent to which the trade mark is inherently capable of 15 distinguishing as aforesaid, and by reason of the use of the trade mark or of any othercircumstances,the trade mark is in fact capable of distinguishing as aforesaid. Virtually all of the considerations described in relation to 20 Part A apply toregistrability inPart B. However, thereisno statutory requirement as toevidence,althoughevidence may assist in overcoming low inherent capacity to distinguish. Even if a mark is in fact totally distinctive, it does not follow that it is capable of distinguishing in law. The need for a 25 balance between the public interest and the private rights involved in considering the question of distinctiveness for Part A applies equally in the case of Part B. although inthe case of Pan Β the tribunal may have agreater regard tothe future capacity of the mark to distinguish in fact. 30 In practical terms it is easier to obtain Part Βregistration andtherehave been anumberof cases where registration has been allowed in Pan B. but disallowed in Pan A. There is power for an application in Pan A to be treated as an 35 application for Part B. andso most applications are initially madefor PanA. droppingtoPart Βduringnegotiations with the registrar if necessary. It is common for marks initially registered inPan Βintheabsence of any usetobe registered later in Part A when they have acquired sufficient use to be 40 distinctive for the purpose of registration in Pan A." S04 3 C.L.R. Carreras Ltd v. Reg. of Trade Marks Stylianides, J. In "Weidmesh" Trade Mark [1965]R.P.C.590 at p.595 it was said:5 10 15 20 25 30 35 40 "Section 10andPart Β of theregister are concernedwith an alternative methodof registration for marks which canbe shown to be capable of distinguishing the goods of the proprietor, and this is secured by proof of the development of asecondary meaningwhichoutweighs theapparentlynondistinctive characterof themark whenviewedinisolation. It is,therefore, notunreasonable to regard thetwo expressions 'adapted to distinguish' and "capable of distinguishing' as being deliberately chosen so as to direct the particular enquiry aright, the former emphasising that it is because of the presence of asufficient distinguishing characteristicinthe mark itself that distinctiveness is to be expected to result whatever the type and scale of the user and thus secure an estimation of a positive quality in the mark; andthesecond that, in spite of the absence of a sufficient distinguishing characteristic in the mark itself, distinctiveness can be acquiredby appropriateuser,thereby overcominga negative quality in the mark." The requirements of a mark to be registrable in Pan Β are set out in our section
3. afore quoted, which corresponds to section 10 of the English Act. Those requirements were considered by Lloyd-Jacob, J., In the Matter of the Application of Henry Quennell Ld. for a Trade Mark [1954]72 R.P.C 36,at p.37:'That leaves remaining the question as to whether or not this is anapplication suitable for registration in Part Β of the Register. In respect of that part of the application, the decision was criticisedon thegroundthattheapproachtothe problem as expressed in the decision was contrary to the authorities;andit is, Ithink,arguable thatthe language used may be susceptible tosome such criticism. The requirements of Sec. 10, shortly stated, to enable a trade mark to be registered are that the applicants must satisfy the tribunal thatthe mark is capable of distinguishing the goods to which it will be attached; and the section indicatesthatthenatureof theinvestigation mayfall into one 805 Stylianides,J. Carreras Ltd v. Reg. of Trade Marks

(1989)or other of two specified inquiries. The first, set out under Sub-sec.

(2)(a), is that the trade mark is to be inherently capable of distinguishing; and in Sub-sec.

(2)(b)it is to be in fact capable of distinguishing. 5 So far as concerns the first of those requirements, in my judgement the matter falls to be considered solely by examination of the mark applied for; that is to say, that irrespective of the peculiarities, if any, of the trade (which may of themselves provide either capacity to distinguish or, 10 alternatively, may limit the field in which distinctiveness requires to be examined), Sub-sec.

(2)(a),in my judgement, requires consideration solely of the mark itself. Putting itin another way, irrespective altogether of any peculiarities of the trade or the practice of other traders, is the word such 15 that, on examination, it is shown to possess the capacity of distinguishing the goods to which it is applied? If, as in this case,the word is regarded as having a direct reference tothe character of the goods, as at present advised Iam unable to see how that conclusion enables any result favourable tothe 20 Applicants to be arrived at so far as concerns thefirst of the two methods of examining intothecapacity to distinguish." In"77ie International Societyof Postmasters "Trade Mark [197η R.P.C.373,at p.378 itwas said:25 "In herdecision thehearing officer consideredwhetherthe applicants' mark could be accepted in Part Β of the register but concluded that it was not capable of distinguishing the applicants' goods. It was argued on this appeal that even if 30 themark was regarded asfailingtoqualify undersection 9 for registration in Part A, nevertheless themark was capable of distinguishing theapplicants'goods andshouldbeacceptedin Part Β of the register. The matters to be considered in determining whether a mark is capable of distinguishing the 35 applicants' goods are set out in section 10

(2)of theAct. As there is no evidence of use of the mark and no 'other circumstance' was relied upon (vide paragraph (b)of section 10

(2)),Ihave only to consider themark's inherent capability of so distinguishing (paragraph (a) of section 10

(2)). The 40 highly descriptive nature of this mark, which disqualifies it under section 9, for the reasons I have endeavoured to 806 3 C.L.R. Carreras Ltd v. Reg. of Trade Marks Stylianides, J. explain above, in my view render it inherently incapable of distinguishing the applicants' goods. That beingsothemark doesnot qualify for registration inPart B." 5 TheRegistrar didnot errinlaw. Hedidnot, also,fail totake into consideration everything that heshouldhavedone. It was, also, submitted on behalf of the applicants that the Registrar wrongly referred to the"origin"ofthegoods andto a 10 tangible confusion amongthemembers ofthepublic. Itmustbeborn inmindthefunction of atrademark whichis to indicatethe origin of thegoodsto which it isapplied. Thisis fundamental inthis branch of the Law. 15 In Aristoc Ld. v.Rysta Ld. [1945]62R.P.C.65,itwassaid by Lord MacMillan at p.79:20 25 30 35 40 "AsitwasexpressedbyBowen L.J.in Inre Powell's Trade Mark [1893]2Ch.388atpp.4034: Thefunction ofatrade mark is to give an indication to the purchaser or possible purchaser asto the manufacture or quality of thegoods - to v give an indication to his eye of the trade source from which thegoods come, or thetrade hands through which they pass on their way to the market.' Icould multiply quotations to the same effect. I was merely repeating a commonplace when on a former occasion Isaid in this House that it is'of theessence of atrade mark that it shouldindicate origin and be usedas indicative of origin' (BassRatcliff and Gretton Ld. v.Nicholson and Sons Ld. [1932]A.C. 130at pp.1545). It is true that these pronouncements were made before the passingof theActof 1938andthat this Statute enacted a new definition of a trade mark in the words which I have quotedandalsoinSection4,when definingtherightgivenby registration, usednew language, namely,that registration of a person asthe proprietor of a trade mark inrespect of any goods wouldgive that person 'the exclusiverightto the use of the trade mark in relation to those goods.' But I do not agree that thereby 'a radical alteration in the law relating to trademarks'hasbeeneffected onthat therehastherebybeen conferred 'a right crucially different in principle from the rightsheretofore enjoyed by the owners of trade marks,' as 807 Stylianides, J. Carreras Ltd v. Reg. of Trade Marks

(1989)theMasters of theRollsandClauson L.J.heldin Bismag Ld. v.Amblins (Chemists) Ld. [1940] 1 Ch.667at pp.677and

1. Idonot think thatthewidenedlanguageofthe 1938Act has inferentially altered the essential conception of a trade mark inlawandinthisIagreewithandprefer thejudgements 5 in the Bismag case of my noble and learned friend then Simonds J. (1940, 1 Ch. 225) and MacKinnon L.J. whose reasoning I need not repeat. A trade mark must still be registered in respect of goods, it must be used in relation to goods, it must indicate a connection in the course of trade 10 between goods andtheuserofthetrademark. Atrade mark must thus be used in trade. Trade' isno doubt a wide word but its meaning must vary with and be controlled by its context. A connection with goods in the course of trade in my opinion means in the definition section an association 15 with the goods in the course of their production and preparation for the market. After goods have reached the consumer they are no longer in the course of trade. The trading inthem hasreached itsobjective anditsconclusion in their acquisition bythe consumer." 20 Finally counsel for the applicants argued that the device without a wording falls within the definition of mark in section 2 of the Law. This is not contested by the Registrar. It is, however, true that it is not every mark that it is registrable. It 25 hasto comply with andfulfil the requirements of, either section
2. orsection 12and not to becontrary to section
3. The likelihood of confusion existed. The precise scope of section 13isnot easyto define, but it iscertainly not limited in 30 its operation to cases of similarity or competition between the proposed mark and another mark. It is sufficient if there isan inherent probability of confusion, arising from the mark being usedto distinguish two articles which are essentially different in origin and may be wholly different in character and quality - 35 (Aristoc. Ld. (supra)). The sub judice decision is challenged on the ground that it lacks due reasoning. 40 It is well settled that the reasoning of an administrative decision must be clear and adequate in order to enable an 808 3 C.L.R. Carreras Ltd v. Reg. of Trade Marks Stylianides, J. Administrative Court to exercise judicial control. The lack of duereasoningisinitself asufficient groundfortheannulmentof an administrative decision. 5 The reasoning emerges clearly from thereasons for decision andthe material in the file. To recapitulate, I have come to the conclusion that the Registrardidnotmisdirect himself astolaw;hecarriedoutadue 10 inquiry; he did not act under a misconception of fact or excess or abuse of power and the subjudice decision isfully reasoned. Thesubjudice decision wasreasonably open to the Registrar. For the aforesaid, therecourse fails andis dismissed. 15 Let there be no order astocosts. Recourse dismissed. No orderas tocosts. 809