(1989)19S9July21 [STYLIANIDES.J.] INTHE MATTER OFARTICLE 146OFTHE CONSTITUTION SANYO ELECTRIC CO.LTD., Applicants, v. THE REPUBLIC OF CYPRUS,THROUGH THE REGISTRAR OFTRADE MARKS, Respondents. (Case No.37/85) General principles of administrative law — Administrative act — The making of — The four necessary steps — The study, if necessary, interpretation of the relevant legal provisions, ascertainment of the correct facts and application of the Law to the facts — The ascertainment of the truefactspresupposes duty tomake areasonably 5 necessary inquiry — Registration of Trademark — Refusal to extend timefor filingevidence —In thecircumstancessuchrefusaldeprivedthe Registrarfrom having before him allrelevant material— Thereforehe couldnot make adueinquiry. 10 Misconception offact—Failure totakeintoconsiderationmaterialfacts— Annulment of relevant administrativeact. The applicants applied for registration in Part A of the Trademarks Registry in classes 7, 9 and 11of a Trademark consisting of the word 15 FISHER, written in capital letters, with the device of a bird holding a music load. The Registrar objected toonthegroundthat itlacked distinctiveness and it was contrary to the provisions of section 13of Cap.268because 2 0 the word FISHER isa common surname. 810 3 C.L.R. Sanyo Electric Co.Ltd v. Republic The applicant applied and was granted time within which to file an affidavit as regards the aforesaid Trademark In any event applicants disclaimed use of theword FISHER 5 10 Applicants applied for an extension of time within which to file the affidavit. The Registrar refused theapplication andissued thesub judice decision on theground that theword FISHER is a commonsurname. Hencethis recourse Thetwogrounds uponwhichtheCourtannulled thesubjudice decision appearsufficiently mthehereinaboveHeadnotes. Subjudice decisionannulled. No order as to costs. 15 Casesreferredto: Photiades and Co. v.Republicof Cyprusthrough The Minister ofFinance 1964 C.LR 102, 20 Mytides andAnother v.Republic
(1983)3 C.L.R. 1096, Davidoff v. Republic
(1986)3 C.L.R. 2232, Xapolytos andOthers v. Republic(Councilof Ministers)
(1967)3 C.L.R. 25 m Transocean Marine Paint Association v. E.C. Commission [1974] 2 CM.L.R.459. 30 Recourse. Recourse against the refusal of the respondent to register applicants'trademark"FISHER"written incapitalletterswith thedevice of abirdholdingamusicnoteasatrademarkunder 35 classes 7,9 and11of PartAof theRegisterofTradeMarks. A. Dikigoropoulos, for the Applicants. 40 St. Ioannides(Mrs), Counsel of the Republic Β', for the Respondents. Cur.adv. vuit 811 Sanyo Electric Co. Ltd v. Republic
(1989)STYLIANIDES. J. read the following judgment. The applicants by means of thisrecourse seek the annulment of the decision of the Registrar of Trade Marks (the "Registrar") to refuse to register the applicants' trade mark in Classes 7.9and 11 of Part A, in applications 23601, 23602. 23603, 5 communicated to them byletter dated 7th November. 1984. The applicants are a company of limited liability. incorporated in Japan, trading in electronic and other goods manufactured by them andsold in Cyprus from 1981onwards. 10 Byapplications 23601, 23602 and23603,dated 18th March. 1983, the applicants requested the registration of their trade mark "FISHER", written incapital letters,with the device of a birdholdingamusicnote,itsatrade mark inClasses7.9 and 11. 15 TheRegistrar requested particularsofthegoodsfor whichthe applications were made and details and/or particulars were given on 29th March, 19S3. 20 On 22nd April, 1983,the Registrar informed the applicants that their applications, havingbeing considered for acceptance, were objected to, on the ground that the proposed trade mark is, in accordance with theprovisions of section ll(l)(
- d)and (
- e)of the Trade Marks Law, Cap. 268 (the "Law"'), a common 25 surname and it lacks distinctiveness and that it was contrary to the provisions of section 13. The applicants applied for a hearing through their then advocate, who is different from their advocate in the present 30 recourse. On28th April, 1984,whenthecasewasset down for hearing, on the application of the applicants' advocate, the three applications were consolidated. The applicants' advocate 35 submitted,not byaffidavit, fourlistsshowingtheuseofthetrade mark in Cyprus, which were not signed. He,further, said atthe hearing that the applicants accepted to disclaim the word "FISHER". 40 On 18th May, 1984, the Registrar by letter requested evidence of user in the form of an affidavit and informed 812 3 C.L.R. Sanyo Electric Co. Ltd v. Republic SUlianides..!. applicants*advocate that suchevidence oughtto be filed bv the 17thJune. 1984. In view of the fact that thesaid affidavit could not have been 5 sworn by any agent or representative of the applicants in Cyprus, the advocate for the applicants requested in writing extension of time tor three months to tilesuch evidence. The Registrar's letter was translated and forwarded to the 10 Head Office in Japan. Applicants' advocate,beingunableto obtain the evidencein time before the 17th September, due. inter alia, to the summer vacations, on 15th September. 1984.requested in writing for a 15 further extension oftimetoNovember. 1984,for filing affidavit. No reply wasgiven to this letter. On29th October, 1984.there isanote ineachone ofthesaid 20 applications, on the identical letters of applicants' counsel: •'objections and, (signature),29/10/84". On 7thNovember, 1984,aletterwassentbytheRegistrar to the applicants' counsel, iniorming him that his request for 25 extension of time could not be acceded; in a second paragraph he was informed that the Registrar considered the aforesaid applications and, on the facts before him, found that the objections could not be waived and refused the applications for registration. 30 Asa result this recourse was filed. The grounds of law on which this recourse isbased are that the Registrar failed to carry out a due inquiry, deprived the 35 applicants of the opportunity to be heard and exercised his discretionary powers wrongly andcontrary to law. Heviolated the rules of natural justice. He misdirected himself on the law and, particularly, the meaning and effect of sections 11,13 and 14 and ignored completely the relevant provisions of Law 40 66/83, whereby provisions of the Paris Convention for the Protection of Industrial Property of 1883, as subsequently revised,wasratified. TheRegistraractedunderamisconception 813 Stylianides, J. Sanyo Electric Co. Ltd v. Republic
(1989)of fact. Counsel for theapplicantssubmittedthattheRegistrar is an administrative authority, entrusted with discretionary powers. Intheexerciseof suchpowers,hehastocomplywiththeLaw, 5 including the principles of administrative law,which obtain in this country after the establishment of the Republic. The Registrarmisdirected himself andassimilatedtheexerciseofhis functions with that of the English administrative authorities, where the principles of administrative law,in this respect, are 10 different. Hedeprivedtheapplicants,inthewayheacted,ofthe opportunity tobeheardinacasewhereadecision affecting his interest wastaken bytheAdministration. Section41ofthe Lawprovidesthat:- 15 "41. Where anydiscretionary orotherpowerisgivento theRegistrar bythis Lawortherules,heshall not exercise that poweradverselyto theapplicant for registration orthe registered proprietor of thetrademark in question without 20 (if dulyrequiredso to dowithin the prescribedtime)giving to the applicant or registered proprietor an opportunityof beingheard." He, also, referred to "The Right of Defence before the 25 AdministrativeAuthorities"byM.D.Stassinopoulos, 1974,and submitted that no decision of the Administration should be taken in acaselike thepresent one,withoutgivingthecitizen the right and the opportunity to present hiscase. This isthe right ofdefence. Counsel for the Registrar arguedthat evidence shouldhave been in writing and that statements of advocates are not accepted. That extension of timewasgrantedto applicants to producesuchaffidavit evidence,whichisrequiredbysection52, 35 which provides that "in any proceeding under thisLaw before the Registrar, the evidence shall be given by affidavit in the absenceofdirectionstothecontrary". An administrative authority has a duty to make the 40 reasonably necessary inquiry for the purposes of ascertaining the correct facts to which the relevant legislation is to be 814 30 3 C.L.R. Sanyo Electric Co. Ltd v. Republic Stylianides, J. applied. Theascertainment ofthetruefactual situation isoneof the four necessary steps inthe making of an administrative act, as follows: the study and, if necessary, interpretation of the -relevant legal provisions; ascertainment of the correct facts;5 application ofthelawto thefacts; anddecision on thecourseof action (Vide "The Law of Administrative Act" by Stassinopoulos
(1951)p.249; Photos Photiades and Co. and TheRepublic of Cyprus through TheMinister of Finance
(1964)C.L.R. 102;Mytides andAnother v. Republic
(1983)3 10 C.L.R. 1096). Even if, from the strictly procedural point of view, the proceedings before theRegistrar wereconducted in accordance withtheTradeMarksRules,Iamoftheopinion that the refusal 15 of the Registrar to grant funher extension of time to the applicants to submit the affidavit evidence in support of the registration of their trade mark, prevented the Registrar from having before him all relevant material and, thus, he was deprivedofthepossibility ofmakingadueinquiry inrelation to 20 the application for the registration of the trade mark of the applicants. Lack ofdueinquiryonthepart ofthe administrative organ results in the invalidity of its relevant decision (Davidoff v. Republic
(1986)3 C.L.R. 2232; Mytides case (supra)). 25 In Styllis Xapolytos and Others v.Republic (Councilof Ministers)
(1967)3 C.L.R. 703,Triantafyllides, J., as he then was,saidthe following at pp.709-710:30 35 40 "It wasa matter of proper administration for the Council ofMinisterstohavedecided,onwhetherornotthesubjudice proclamation were to be made, after weighing duly all materia] considerations, including the objections of the Applicants;itwas,moreover,amatter ofnatural justice,ina caseofthisnature,forthesaidobjections tobeconsideredby the Council of Ministers. In the circumstances already explained in thisJudgement, the Council wasnot enabled to act asrequired by proper administration andnatural justice; and it was, also, led to act on the basis of an incomplete picture of the matter." (See, also, Transocean Marine Paint Association v. E.C. 815 Stylianides, J, Sanyo Electric Co. Ltd v. Republic
(1989)Commission [1974]2 C.M.L.R. 459.at p.477.andthe opinion of Advocate General Warner, pp.469-471.The Registrar prevented himself from carrying out a proper inquiry and reached the sub judice decision on the basis of an 5 incomplete picture of the matter. The sub judice decision shall be annulled for lack of due inquiry. 10 Itis.however, liable to annulment for anotherground. On 28th April, 1984. the advocate appearing for the applicants stated that theapplicants accepted adisclaimerof the word "FISHER*'. From the letter -objection of the Registrar, 15 dated22ndApril. 1983,to which reference wasmadeabove,the objections were taken basically because of this word-surname. The decision of 29th October. 1984, communicated to counsel on 7th November, 19S4, coupled with the address of 20 counsel for the Registrar, leaves no doubt that the Registrar failed to take into consideration the applicants' willingness to disclaim the word "FISHER". The sub judice decision and the whole argumentation before 25 me, intwowritten addressesofthecounsel fortheRegistrar, are basedon the word "FISHER". ThustheRegistrarfailed to take into consideration facts material for determination of applicants" application and took into consideration a matter that he should not. The decision isthus faulty for misdirection 30 of fact, abuse and/orexcess of power. For the foregoing, the recourse succeeds, the sub judice decision isdeclared null and void. 35 Let there be noorder astocosts. Sub judice decisionannulled. No orderastocosts. 816