clr/1989/1989_3A_901.pdf

(3)(a)andφ) — Use by advertisement— Whetheruseinthesense of section 2

(2),section 11

(2)or section ll

(3)(b) of Cap.268— Question determinedinthe positive. By means of the present recourse the applicants impugned the decision of the RegistrarofTrademarks wherebyherefusedtoregister a Trademark inclass34forcigaretteson groundthat themark inquestion consisting of two colours only, namely gold and maroon, was not distinctive and contravened section 13of Cap. 268. 901 Alfred Dunhill Ltd v. Registr.of Trade Marks

(1989)The applicants Tiled voluminous evidence claiming that their mark has become in fact distinctive by reason of long use in Cyprus. The Registrar rejected thecontentionupon a Findingthat such use consisted of advertisement only in Cyprus. The Registrar was of theopinionthat such advertisement didnot amountto use,as required by Law. 5 Having analysed the authorities on the subject, the Court reached a different conclusion and, therefore, annulled the sub judicc decision on theground of misconceptionof Law. 10 Sub judice decisionannulled. No order as to costs. Casesreferred to: 15 /.W.S. Nominee Co. Ltd. v.Republic(Registrarof TradeMarks)

(1967)3 C.L.R.582, E. Merck v.Republic andAnother

(1972)3 C.L.R. 548, 20 White Horse v. El Greco

(1987)3 C.L.R.531. Recourse. Recourse against the refusal of the respondents to register 25 applicant'strademarkinrespect ofcigarettes inClass 34ofthe Register of TradeMarks. GM. Nicolaides, for theApplicants. 30 St. Ioannides (Mrs),Counsel of the Republic Β', for the Respondent. Cur. adv. vult. STYLIANIDES, J. read the following judgment. The applicants by means of this recourse challenge thevalidity of the decision of theRegistrar ofTradeMarks (the"Registrar"), whereby he refused to register a trade mark in Class 34 in respect of Cigarettes. Counsel for the applicants invited the Court to exercise 902 35 40 3C.L.R. Alfred Dunhill Ltdv.Registr. of Trade Marks Stylianides,J. powersofAppeal Courtundersections 19and50oftheTrade Marks Law,Cap.268(the"Law"). With respect, the part of section 19,providing for appeal, 5 andthewholesection50ofthe Law,beinginconsistent witha recourseunderArticle 146oftheConstitution,werenotsaved byArticle 188and,asfrom Independence Day,theyarenotin force -(I.W.S. Nominee Co. Ltd. v. Republic(Registrarof TradeMarks)

(1967)3 C.L.R.582; E.Merck v.Republic 10 andAnother

(1972)3C.L.R. 548.at p. 557). The act or decision of the Registrar in an application for registration of a trade mark is of administrative nature, amenable to the Revisional Jurisdiction of this Court under 15 Article 146. It isawell established approach of our Supreme Court,on the basis of the principles governing the exercise of its jurisdictionasanAdministrativeCourt,inthefirstinstanceand 20 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 substituteitsownevaluationintheplaceofthatoftheRegistrar - {White Horse v.EIGreco

(1987)3C.L.R.531,at p.534, 25 wherethepreviousCaseLawis cited). This Court does not interfere with the exercise of administrative discretion by the Registrar, if due weight has been given to all material facts, it has not been based on a 30 misconception oflaworfact anditwasnotexercisedinexcess orabuseofpower-(Merck v.Republic(supra)atp.564). Theapplicantsbasedtheircase,interalia,onthegroundthat thesubjudicedecision istaintedwithmisconception oflaw. 35 Therelativefacts are> Theapplicants -Alfred Dunhill Limited,of 30DukeStreet, St.James, London, filed an application, under No.21570, for 40 theregistration ofamarkasatrademarkinClass34,inrespect ofcigarettes. 903 Stylianides,J. Alfred Dunhill Ltd v.Registr.ofTrade Marks

(1989)The Registrar took objection to the mark, on the ground that it is not distinctive,asrequired bysection 1l(l)(e) ofthe Law,inthatthecolourscomprisingthesaidmark arecommon to the trade for cigarettes and that it contravenes section 13. The mark consisted of the colours gold and maroon without 5 anyother matter. The applicants claimedthat their mark hasbecome in fact distinctive by reason of long use in Cyprus, is identified with them andissufficient to identify theirproducts inthecigarette 10 market ofthiscountry. TheRegistrar proceededtodeterminetheapplication under section 1 l

(3)(a)and(b),whichreads:15 "

(3)In determining whether atrade mark isadapted to distinguish asaforesaid theRegistrarmayhaveregardtothe extent towhich(a) thetrademarkisinherentlyadaptedtodistinguish as 20 aforesaid; and (b)by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted todistinguish asaforesaid." 25 Thisstatutoryprovisionisidenticaltosection9

(3)(a)and(b) of theEnglishTradeMarksAct.1938. The applicants filed a considerable volume of affidavit 30 evidence,whichshowedthattheproposed mark hadbeenused onlybywayof advertisement inthiscountry. TheRegistrartooktheviewthatusebyadvertisementisnot useinthesenseofsection2

(2), 11

(2)orsection ll

(3)(b) ofthe 35 Law.Therelevant part ofthegrounds of decisionreads:"Such evidence shows that the mark proposed for registration hasbeenusedbywayofadvertisementonlyand not in conjunction with the goods. Considering and 40 evaluating therefore the evidence of the trade mark propounded for registration which is confined to 904 3 C.L.R. Alfred Dunhill Ltd v.Registr. of Trade Marks Stylianides, J. 5 advertisements only, Ifind that the use relied upon by the Applicants is not use in relation to the goods within the meaning of the word 'distinctive' in section 11

(2)of the Law,whichcanbetaken intoconsideration for the purposes of sec. ll

(3)(b) of the Law: Vide the wording of the definition of the words 'trade mark' in sec.2

(2)of the Law; also see Kerly's on Trade Marks 10th Ed.para2-20, where it isstated as follows: 10 'Use in relation to goods 15 The words 'applied or attached to goods' in Kerly's definition wereamplyjustified bytheauthorities,andastrict view as to what amounted to use of atrade mark wastaken in construing words in former Acts. Under the Act of 1905 it washeldby the Registrar that,where actual use of atrade mark had to be proved, an applicant had not used a trade mark if the user had been confined to advertisements; 20 Section 2

(2)of the Law - a replica of section 68

(2)of the English Act -provides that references in the lawto the use of a mark in relation to goods shall be considered as references to the use thereof upon, or inphysical or other relation togoods. 25 The expression "use in relation to goods" is found both in sub-section

(2)of section 11,which defines "distinctive" and subsection

(3)herein above quoted. 30 The passage from Kerly's on Trade Marks, 10th Edition, citedandappliedbytheRegistrar,containsthestatement ofthe Law under the Act of 1905. In consecutive editions of Kerly (vide 10th Edition, para 235 20, 12th Edition, para 2-06) the difference, after coming in force of the 1938 Act, is clearly stated. In the 10th Edition, after the passage, which the Registrar cited, adopted and applied, it is written:40 "The words 'in relation to goods' taken in conjunction with the provisions of section 68

(2)are much wider than 'applied or attached.' They may have been intended to be 905 Stylianides,J. Alfred Dunhill Ltdv.Registr.of Trade Marks

(1989)widerthan 'in connection with' and were suggested bythe Departmental Committee in order to include the use of a trademark inadvertisements. Many of the olddecisions asto what amounted to ause 5 of a trade mark are,accordingly,now of historical interest only." Inthe 12thEdition,para2-06,p. 10,thepresent positionof theLawisstatedasfollows:- 10 "Useinrelation togoodsorservices Thewords'inrelationto'replacedin 1938thephrase'in connection with' of the 1905 Act; they were intended to 15 include use in advertisements, something previously considered by the Registrar not to be actual use asatrade mark. The older casestake an even narrower view. Thus manyofthepre-1938casesareofhistoricalinterestonlyon thismatter.Thephrase'use...inrelationtogoods'isdefined 20 insection 68

(2)asmeaning'usethereof upon,orinphysical orother relation togoods';upon whichtheHouseofLords has observed '... applied to the surface of the goods ('use upon') orincorporated inthestructureofthegoods('usein physicalrelation to'). 25 Theoraluseofatrademarkhasneverbeenheldtobean infringement andisexcluded from the definition bysection 68

(2). 30 It must be observed that the words are: 'in relation to goods' 'in relation to services', 'so that there must be, at least,anintentiontomakeavailableactualgoodsorservices in relation to which the mark is to be used. This-may be material in regardtothequestionsalreadymentioned asto 35 thelocalityoftheuse. Advertisementsoften reachlocalities for which they are not primarily intended. Thus, foreign periodicalsinwhichgoodsareadvertisedunderatrademark often haveacirculationinthiscountrywhichisbynomeans negligible. Such advertisements may be relevant to the 40 question whether atrademark hasacquiredareputation in this country, e.g. under section 11 (Chap. 10).The casual 906 3C.L.R. Alfred Dunhill Ltdv.Registr.of Trade Marks Stylianides,J. 5 10 circulation of such periodicals wouldnot by itself constitute a use of the trade mark in relation to goods in the United Kingdom. Where advertisements ofgoods produced abroad arerelieduponto establish theuseofthetrademark,itmust be possible to identify the goods advertised asgoods which, at some stage in the course of trade,are, or are intended to be, dealt with in the United Kingdom. So also, if foreign advertisements for servicesaretobereliedupon asuse,they must relate to services to be performed in the United Kingdom." "Use in relation to" includes use by advertisements. With the growth of advertising in the modern world, reputation of trademarkshasbecomewidelyusedinadvertisements,soasto 15 familiarize buyers with the market, though the application of trade marks to the actual goods or to the packages containing them still constitutes their basic function. A trade mark is meant to indicate to potential buyersthat thegoodsweremade by the proprietor of the trade mark and not by any other 20 manufacturer. This misconception of law prevented the Registrar from duly taking into account, all relevant considerations and, consequently,hisrelevant discretionary powerswere exercised 25 in a defective manner. Inthelightoftheforegoing, thesubjudicedecisionhastobe annulled. Therefore, it is unnecessary to decide the other grounds put forward against the validity of the sub judice 30 decision. The subjudice decision ishereby declared null andvoid and of no effect. 35 No order asto costs. Subjudice decisionannulled. No orderasto costs. 907