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ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ
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(1988) 3 CLR 1400
1988 July 12
[KOURRIS, J.]
IN THE MAtTER OF ARTICLE 146 OF THE CONSTITUTION
FROMAGERIES BEL,
Applicant,
v.
THE RePUBLIC OFCyPRUS, THROUGH
1. THE MINISTER OF COMMERCE AND iNDUSTRY,
2. thE rEGISTRAR OF TRADE MARKS,
Respondents.
(Case No. 519/86).
Trademarks-Registrability-Resemblance to a mark already registered-Course to be followed-Principles applicable-The Trade Marks Law, Cap. 268,section 14(1).
Trademarks-Registrability-Confusion or deception,likelihoodof-Test applicable-The Trade Marks Law, Cap. 268, section 13.
Trademarks-Registrability-Judicial control-principles applicable.
Trademarks-Evidence-No use yet of proposed mark in Cyprus-Allegationsas to confusion or deception-Correctly treated, in the .circumstances, as opinion evidence-such evidence correctly disregarded by theRegistrar of Trade Marks.
By means of this recourse the applicantsinpugn the decision of the Registrar of Trade Marks to allow the registration of the trade mark of the interested party.
The mark of the applicants depicts a heard of a cow with words in French ''La Vache Qui Rit" and in Greek "Iageladapougela", whereas the mark of the interested party depicts a whole cow in profile view with the English words "Lucky Cow" and Greek words "Laky Kaou Gala Evapore".
It must be noted that there were already several marks on the register which included the device of the cow and that the device of the cow is common to the trade.
This recourse raised the issue of whether the Registrar, in dismissing the objection of the applicant and allowing the registration of the sub judice mark, acted contrary to section 14(1) and 13 of Cap. 268.
Held, dismissing the recourse: (1) In determining the question whether the mark in question offended s.14(1) the Registrar had, first, to consider whether the goods of the applicants were of the same description with those of the interested party and, if yes, whether the degree of resemblance between the two marks was such as to be likely to deceive or cause confusion.
In this case the Registrar followed the aforesaid path. She applied the correct principles, as such principles emanate from the case law. She judged the resemblance both by reference to the eye as well as to the ear. Her decision was reasonably open to her.
(2) In determining the objection under section 13 the Registrar correctly applied the test in Jellinek's Trade Mark [1946] 63 R.P.C. 59; As the mark had not been used in Cyprus, she correctly treated allegations of confusion as opinion evidence, which she had to discard.
(3) This Court does not interfere with a decision as to the registrability of a trade mark, if it was reasonably open to the Registrar.
Recourse dismissed with costs.
Cases referrred to:
Jellinek's Application [1946] 63 R.P.C. 59;
Seixo v. Provezende [1895] L.R.1 Ch. 192;
Smith Hayden and Co. Ltd. Application [1946] 63 R.P.C. 97;
The 7 - up Company v. The Republic (1973) 3 C.L.R. 612;
Beecham Group Ltd. v. The Republic (1982) 3 C.L.R. 622;
White Horse Distillers Ltd. v. El Greco Distillers Ltd.and Others (1987) 3 C.L.R.531
Recourse.
Recourse against the dismissal of applicants opposition in Appl. Nos. 23717 and 23718 for the registration or the words Lacky Cow and Cow and device as trade mark in class 29 of Schedule IV of the Trade Marks Rules, 1951 - 1984.
J: Spanopoulos, for applicant.
L. Koursoumba (Mrs.), for the respondent.
A. Liatsos for K.Michaelides, for interested party.
Cur.adv. vult.
KOURRIS J. read the following judgment. The present recourse is directed against the decision of the Registrar of theTrade Marks, dated 7th June, 1985, whereby he dismissed theOpposition of the applicants in Applications Nos. 23717 and23718 of the words "Lucky Cow" and Lucky Cow and device asTrade marks in Class 29 of Schedule IV of the Trade Marks Rules1951 - 1984 in respect of evaporated milk and milk products ofthe interested party.
The salient facts of the present recourse are briefly as follows:-
On 28.4.1983 Kommanditgesellschaft, DimexNahrungmittel Import and Export GmbH & Co., (hereinafter referred to as"Kommanditgesellschaft") a company organized and existing underthe laws of Federal Republic of Germany, filed applicationsNo. 23717 and 23718 with the Registrar of Trade Marks, for theregistration of the words Lucky Cow and Lucky Cow and device astrade marks in class 29 of Schedule IV of the Trade MarksRules 1951 - 84, in respect of evaporated milk and milk products.The devices of their trade marks are depicted in para 1 of the Decision of the Assistant Registrar of Trade Marks which is appended to the Application as Exhibit 1 and which for the purposes of this Opposition will be referred to as "the Decision".
The applications were accepted for registration in part B of the Register of Trade Marks and, as to application 23718, on condition of disclaimer of the device of the cow and the words "evaporated milk" and "Γάλα εβαπορέ με όλες τις βιταμίνες του"and limitation to be used only for evaporated milk, and, as to both applications, on condition that after advertisement in the official Gazette of the Republic notice of such advertisement should be sent to the owners of the trade mark 8998 La Vache Qui rit, η αγελάδα που γελά and device.
On 12.4.84 notices of opposition to both applications were filed by the advocate of the Applicants, MessrsFromageriesBel, Mr. J. Spanopoulos from Nicosia, who are the registered owners of trademarks Nos. 8998 in class 29 La Vache qui rit and device for all the goods of class 29 of Schedule IV of the Trade Marks Rules 1951 - 84. The device of their trade Marks is as depicted in para 2 of the Decision.
On 20.7.84 a counter - statement was filed by the advocate ofKommanditgesellschaft, Mr. KyriakosMichaelides. - R. 7 in exhibits1 & 2.
On 5.9.84 five (5) affidavits were filed by advocate for theApplicants which referred to both oppositions and were returnedto the advocate to be sworn separately for each case.
On 21.9.84 three of those affidavits were filed again separatelyfor each opposition:
a) Affidavit dated 18.9.84 and declared by DemetrisKalavanas,the general manager of IMEXPO Ltd in Nicosia, the soletrade representatives in Cyprus of the Applicants - R. 20 in exhibits1 and 2.
b) Affidavit dated 19.9.84 declared by KyriacosLeptos, grocerin Nicosia- R.19 in exhibits 1 and 2.
c) Affidavit dated 19.9.84 and declared by CharalambosRoubinas, grocer in Nicosia. - R.18 in exhibits 1 and 2.
On 15.3.85 both parties agreed that the Oppositions 419 and420 be consolidated. - R. 28 of Opposition files 419 and 420.
On the 26.7.85 Kommaditgesellschaft, filed an affidavit dated25.7.85 declared by takisPilavas owner of a Supermarket - R.36in exhibits 1 and 2.
Both oppositions were fixed for hearing on 9.10.85. At thesaid hearing Mr. A. Liatsos and Mr. MariosGeorghiou appeared forKyriakosMichaelides, advocate for the Kommanditgesellschaft, and Mr.J. Spanopoulos appeared for the Applicants.
The Registrar, having considered very carefully everythingproperly put before him by the parties to those proceedings, including all the material facts and considering the admissible evidence and counsels submissions, came to the conclusion thatKommanditgesellschaft had discharged the onus of establishingthat the use of their mark applied for registration would not offendagainst the relevant legislative provisions and thereforefound that the oppositions failed, and consequently be dismissedthe Opposition and directed that applications Nos 23717 and23718 be proceeded to registration as advertised.
On 12.6.1986, the Respondent's Decision as aforesaid wascommunicated to counsel for the Applicant - Exhibit 1 appended to the application.
As a result, the interested party filed the present recourse challengingthe sub judice decision and praying for its annulment onthe ground that the Registrar acted under a misconception of lawand/or facts, in abuse and/or in excess of power and/or that he exercised his discretion wrongly. The interested party further alleges that the Registrar was wrong in evaluating the evidence adduced by the applicants.
As rightly stated by the respondent Registrar in his sub judicedecision, in reaching his decision the Registrar had to apply thefollowing provisions of s.13 and s.14 (1) of the Trade MarksLaw, Cap. 268 which read as follows:-
"s.13. It shall not be lawful to register as a trade mark orpart of a trade mark any matter the use of which could by reasonof its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a Court of Justice, orwould be contrary to law or morality, or any scadalous design.
s. 14(1) Subject to the provisions of subsection 2 no trademark shall be registered in respect of any goods or descriptionof goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resemblessuch a trade mark as to be likely to deceive or cause confusion."
The wording of ss.13 and 14(1) of Cap. 268 above, is thesame as that of sections 11 & 12 (1) of the. Trade Marks Act, 1938 in England.
Therefore, the Registrar had to consider whether the relevantapplications offended against s.14(1) and for this purpose he hadto consider (i) whether the goods in respect of which the applicants (interested party in this recourse) were seeking registration,were the same or the same description as any of the goods of therespondents (applicants in this recourse);(ii) if so, the degree of resemblance presuming normal and fair manner of use of thegoods. Also, he had to consider whether it offended s.13.
In considering the application under s.14(1) the Registrar examinedfirst, whether the goods were of the same description. Afteranalysing properly the legal position with reference to the well established criteria for determinating such questions and applyingthe test laid down in the Judgment of Romer, J. in the case ofJellinek's Application 1946, 63 R.P.C. 59 at p.70, the Registrarcame to the conclusion that the goods were of the same description.Having found that the goods were of the same description,the Registrar then proceeded to the second issue which called forconsideration, namely a comparison of the marks. The Registrarquite legitimately compared the trade marks in the manner whichwell appears in Cap. 17 of Kerley's Law ofTrade Marks andTrade Names, 11th edn., paragraphs 17- 07 to 17 - 41,pp. 407-430.
At p. 407 of that book from the summing up of Lord Cranworth,in Seixo v. Provezende, [1895] L.R., 1 Ch. 192, it isstated:-
"What degree of resemblance is necessary ..............is fromthe nature of things incapable of definition a priori.
And the standard of course is not always the same."
And further down on the same page of that book-
"It follows that except in so far as they lay down any generalprinciple, the decided cases are of little assistance in the de-termination of new questions of fact raised upon materials ... In all cases as states above, it should be borne in mind that adecision on the question whether a mark so nearly resembles another as to be likely to deceive or cause confusion is not an exercise of discretion by a tribunal but a finding of fact."
Same book pages 415 - 416 para 17-19
"Common elements: some dicta
In Broadhead's Application, EvershedM.R. followed theobservations of Lord Russell in Coca Cola Canada v. Pepsi Cola Canada, where he stated: Where you get a common denominator,you must in looking at the competing formulae paymuch more regard to the parts of the formulae which are notcommon - although it does not flow from that that you musttreat the words as though the common part was not there atall. Where common marks are included in the trade marks tobe compared, or in one of them, the proper course is to look atthe marks as wholes, and not to disregard the parts which arecommon.
In the Kleenoff, case Maugham L.J. said: 'In the presentcase my view is that the test of infringement where the trademark has a descriptive element is the same as the test where ithas no descriptive element, except so far as the descriptive element is itself common to the trade.'
In Harrods Application, the Registrar stated: 'It is a well-. recognised principle that has to be taken into account in consideringthe possibility of confusion arising between any two trademarks, that, where those two marks contain a commonelement which is also contained in a number of other marks inuse in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the otherfeatures of the respective marks and to distinguish betweenthem by those features. This principle clearly requires that themarks comprising the common element shall be in fairly extensiveuse and, as I have mentioned, in use in the markets inwhich the marks under consideration are being or will beused."
Same book p. 417 para 17- 22
"The resemblance between two marks must be consideredwith reference to the ear as well as to the eye."
Same book p. 423para 17 - 30
"In general, the existence of a number of marks, either as Common marks or as trade mark, may operate to 'render a finerdestinction allowable than would,otherwise be the case, forthe persons concerned in the trade in question may have hadtheir attention directed to the kind of distinction which existsbetween the mark propounded and any of the others, becauseit is analogous to the known distinctions existing between thelatter:"
The relevant passage of the decision of the respondent Registraris stated in paras. 20 & 21of the Decision which read as follows:-
''20. Further and despite the provisions of s.16 on disclaimersI proceeded to compare further the two marks: The mannertrade marks are compared, well appears in Chapter 17 of Kerly's Law of Trade Marks, 11th Ed. , paras ,17 - 07 -17 - 41.Comparing therefore the marks in the light of the said legalprinciples and bearing in mind that the resemblance must beconsidered with reference to the ear as well as to the eye I havereached the conclusion that they do not have considerable similarityboth visually and phonetically to the extent prohibited bys.14(1) of the TradeMarks Law Cap. ,268 (as amended).
21. Bearing in mind the above considerations and giving tothe matter the most careful attention and considering the admissible evidence and considering also the Counsels' submissions,I have reached the conclusion that the Opponent's objectionunder sec. 14(1) fails."
In the light of the above - quoted legal principles,and the reasoningof the sub judice decision of the Respondent Registrar, theRegistrar was correct in his Decision and it was reasonably open to him to reach his decision.
In particular, the mark of the applicant depicts a head of a cowwith words in French "La Vache Qui Rit" and in Greek" I ageladapougela", whereas the mark of the interested party depicts awhole cow in profile view with the English words "Lucky Cow" and Greek words "Laky Kaou Gala Evapore". Further, as alreadystated in the sub judice decision of the respondent in paragraphs15 - 19, there were already several marks on the register whichincluded the device of the cow and the device of the cow is commonto the trade. In point of fact, trade mark No. 12847 of theMorinaga Milk industry Co. Ltd. seems to have more resemblanceto the mark of the applicant, whereas marks 9993 and7944 resemble more the mark of the interested party.
In conclusion, the Registrar in testing the resemblance withreference both to the ear as well as to the eye, and bearing in mind that there existed a number of the marks in the same trade containing that common element, a fact which is well - recognized as tending to cause purchasers to pay more attention to the other features of the respective marks and to distinguish that by those features it was reasonably open to him to reach the conclusion that the marks did not have a considerable similarity both visually and phonetically to the extent prohibited by s.14(1) and, therefore, this point cannot stand. The Registrar, having decided the matter unders.14 (1) he then proceeded to consider the case under s.13.
In doing so, he applied the OVAX test which was formulatedby the Court in the case of Smith Hayden and Co. Ltd. Application,[1946] 63 R.P.C. 97 at p. 101 and cited in Kerley's Law ofTrade Marks and Trade Names 11th edn. at p. 134, paragraph 10- 02 which reads as follows:-
"Assuming user by Horis Limited of their marks Hovis andOvi in a normal and fair manner for any of the goods coveredby the registrations of these marks (and including particularlygoods also covered by the proposed registration of the markOvax) is the court satisfied that there will be no reasonablelikelihood of deception and confusion amongst a substantialnumber of persons if Smith Hayden & Co. Ltd. also use theirmark Ovax normally and fairly in respect of any goods coveredby their proposed registration;"
The Registrar further stated that the evidence was adduced by both of the parties of the question whether It was likely that deception or confusion might arise, which he carefully read andconsidered, but acted on the principle that as the proposed markshad not been used in the market yet,the affidavits submitted bythe opponents were merely opinions and were not evidence of actual incidents of confusion or incidents of no confusion, andthus, proceeded to decide the matter on the test laid down byRomer J. in Jelinek's Trade Marks [1949] 63R.P.C. 59 at p.78.
The Registrar, on the facts of the case before her,decided thatshe was not convinced that by using interested party's trademarks in the Cyprus market there was a likelihood of deception orconfusion within the meaning of s. 13. In her decision the respondent registrar with regard to this point, said the following:
"Reading carefully these affidavits I am not convinced that by using the applicants trade marks in the Cyprus market there isa likelihood of deception or confusion within the meaning ofs.13.
To decide on this question I have in mind the test as in effect was laid down by Romer J. in Jellinek's Trade Marks[1949] 63 R.P.C. 59 at page 78:
Upon the evidence which I have before me, what is the testwhich I have to apply in considering whether deception or confusion within the meaning of sec. 11 is likely to occur;.............
It is sufficient if the result of the user of the mark will bethat a number of persons will be caused to wonder whether itmight not be the case that the two products come from thesame source. It is enough if the ordinary person entertains areasonable doubt.
I think that these propositions are the test, and I wouldmerely add, the following extract from the judgment of thelate Farwell, J., in Bailey's case, reported in 52 RPC., 136 at page, 153:I think that the Court has to be satisfied not merelythat there is a possibility of confusion; I think the Court mustbe satisfied that there is a real tangible danger of confusion ifthe mark which it is sought to register is put on the Register."
I am of the view that it was reasonably open to the Registrar toreach this decision and the opposition under s.13 fails.
Furthermore, I am satisfied that the respondent Registrar hascorrectly discarded opinion evidence adduced before her. (SeeThe 7 - Up Company v. The Republic (1973) 3 C.L.R. 612, andthe case law referred to therein. Furthermore, the respondentRegistrar properly directed herself on the law as to the onus ofproof in cases of opposition proceedings under ss. 13 & 14 of theTrade Marks Law. The onus of proof is on the applicants whohave to establish both that their trade mark is registrable and thatthe opposition is not justified.
The approach of the Supreme Court as to when the Courtshould interfere with an administrative decision regarding the registrabilityof a trade mark, is that "this Court will not interferewith such a discretion if due weight has been given to all materialfacts, it has not been based on a misconception of law or fact, and itwas not exercised in excess or abuse of power. (See BeechamGroup Limited v. The Republic (1982) 3 C.L.R. 622 at p. 633).
In a recent case, White Horse Distillers Ltd. v. El Greco DistillersLtd. and Others (1987) 3 C.L.R. 531, it was held by the FullBench of the Supreme Court that on the basis of the principlesgoverning the exercise of its jurisdiction, as an administrative Court in the first instance and on appeal, does not interfere withan administrative decision regarding the registrability of a trademark if such decision was reasonably open to the Registrar ofTrade Marks and it does not substitute its own evaluation in the .place of that of the Registrar.
In the present case, on the material before me, which was alsobefore the respondent Registrar, and having carefully considered the reasons given by the Registrar of Trade Marks for the sub judice decision, I have come to the conclusion that it was reasonably open to her to decide as she did and her decision is, therefore affirmed.
In the result, the recourse fails and is hereby dismissed with costs in favour of the respondent.Costs to be assessed by the registrar.
Recourse dismissed with costs
infavour of respondent.