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ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ
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(1989) 3A CLR 874
1989 July 31
[STYLIANIDES, J.]
IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION
ADIDAS SPORTSCHUHFABRIKEN ADI DASSLER KG,
Applicants,
V.
THE REPUBLIC OF CYPRUS, THROUGH THE MINISTER OF
COMMERCE AND INDUSTRY AND/OR ANOTHER,
Respondents.
(Case No. 101/85)
Words and phrases - "Persons aggrieved" - A phrase to be very liberally construed.
Trademarks - Rectification of Register - The Trademarks Law, Cap.268, section 31 - Extensive reference to authorities.
Judicial control - Trademarks - Decision in respect of application for rectification of Registry of Trademarks under section 31 of the Trademarks Law, Cap. 268 - Interference by Court - Principles applicable - Court does not interfere if the decision was reasonably open to the respondent.
The applicants who are registered proprietors in Cyprus of Trademark "adidas and device" applied for the removal of the script of the word "alysida" from another Trademark, belonging to interested party. The Registrar rejected the application. In doing so he referred to the case law and concluded that:
(a) There is no connection or similarity between the two Trademarks,
(b) The word "adidas" is different as regards appearance (οπτικώς), sound (ακουστικώς) and meaning (εννοιολογικώς),
(c) The products in respect of which the two Trademarks are used are consumed by people who are in a position to distinguish between them,
(d) The device of the applicants, which is registered with the word "adidas", does not look like the device, which is registered and used with the word "alysida",
(e) Taking into consideration all the circumstances of the case there is no possibility of confusion or error of the one with the other,
(f) The applicants are estopped from raising the present application because three years have passed since Trademark "alysida and device" had been used.
In the light of the authorities, to which extensive reference is made, but, also, in view of the nature of the jurisdiction of the Court under Art. 146.1, the Court dismissed the recourse on the ground that the sub judice decision was reasonably open to the respondent.
Recourse dismissed. No order as to costs.
Cases referred to:
Smith Hayden and o. Application 63 R.P.C. 97,
"BALI" Trade Mark [1969] R.P.C. 472,
GE Trade Mark [1973] R.P.C. 297,
Jellinek's Trade Mark [1946] 63 R.P.C. 59,
In re an Application by George Angus & Coy.Ld for Rectification of the Register of Trade Marks [1943] 60 R.P.C. 29,
Constantinides v. Republic and Another (1988) 3 C.L.R. 2375,
Matsas v. Republic (1988) 3 C.L.R. 1448,
White Horse v. El Greco (1987) 3 C.L.R. 531,
Merck v. Republic (1972) 3 C.L.R. 548,
Seven-Up Company v. Republic (1973) 3 CL.R. 612,
Curzon Tobacco Co. Ltd. v. Republic (1975) 3 C.L.R. 363,
Beecham Group Ltd. v. Republic (1982) 3 C.L.R 622,
P.M. & G. Stavrinides Clothing Industries Ltd. v. Republic (1983) 3 CL.R.98,
Effems A.G. v. Republic (1985)3 C.L.R. 793,
Pepsi Co. Inc. v. Republic (1985) 3 C.L.R.1092,
Fisons Ltd v. Registrar of Trade Marks (1985) 3 C.L.R. 2318.
Recourse.
Recourse against the refusal of the respondents to rectify by part removal from the register of the registered trade mark No. 21118.
G. Platritis, for the Applicants.
St. Ioannides (Mrs), Counsel of the Republic B, for the Respondents.
Cur.adv. vult.
STYLLANIDES, J. read the following judgment. By means of this recourse the applicants seek the annulment of the decision of Respondent No. 2, the registrar of Trade Marks (the "Registrar"), dated 29th December, 1984, whereby he refused their application for rectification by part removal from the register of the registered trade mark No. 21118.
The applicants, Adidas SportschuhfabrikenAdiDassler KG, of Germany, are the registered proprietors in Cyprus of trade mark under application No. B13340, Adidas and Device as from 27th March, 1971.
On 28th June, 1984, the applicants changed their name to Adidas SportschuhfabrikenAdiDasslerStiftund& Co. KG. Suchchange was recorded with the Registrar on 31st October, 1984 and was duly advertised in the Official Gazette of the Republic No. 2039, dated 8th March, 1985.
Krashias Shoe Factory Ltd., of Kokkinotrimithia Cyprus, are the registered proprietors in Cyprus of trade mark under application No. 21118, Alisida& Device (a knot) since 27th November, 1980.
On 13th May, 1983, the applicants applied to the Registrar by application dated 11th May, 1983, under the provisions of the Trade Marks Law, Cap. 268 (the "Law"), for the rectification of the Register of Trade Marks by the removal of the script of the word "Alisida" from the trade mark No. 21118. The procedure prescribed by the law and the Trade Marks Rules 195 1-1984 was followed. The applicants application was refused by decision dated 29th December, 1984.
The sub judice decision is challenged on the following grounds:-
The Registrar, once he found that the applicants are "aggrieved person", ought to have accepted their application: he acted under misconception of law: he failed to carry out a due inquiry; he failed to take into consideration the affidavit evidence adduced by the applicants and acted under misconception of fact.
The grounds of their application for partial removal from the register were as follows:-
"α) Οι αιτητού είναι πρόσωπον δυσηρεστημένον (person aggrieved).
β) Οι αιτηταί είναι ούτω δυσηρεστημένον πρόσωπον διά την εγγραφήν και γενομένην καταχώρισιν του εμπορικού σήματος αρ. 21118 alisida & device εις το Μητρώον εμπορικών σημάτων Κύπρου διότι περιέχει την λέξιν alisida με γραφήν πανομοιότυπον με την γραφήν του εγγεγραμμένου εμπορικού σήματος αρ. Β13340 addidas & device των εναγόντων καταχωρημένου επίσης εις το Μητρώον Εμπορικών Σημάτων Κύπρου και διότι:
(Ι) Αύτη εγένετο άνευ ευλόγου αιτίας και/ή
(II) Η τοιαύτη καταχώρισις αδικαιολογήτως παραμένει επί του Μητρώου.
γ) Τα εμπορεύματα διά τα οποία εγένετο η εγγραφή είναι τα ίδια και/ή της ιδίας περιγραφής εμπορεύματα διά τα . οποία χρησιμοποιείται το εμπορικόν σήμα αιτητών."
The exact remedy requested by the applicants is set out in paragraphs 14 and 15 of the Statement of case, dated 11th May, 1983, accompanying their application.
"14. Διά ταύτα η παρούσα αίτησις δι' ης οι αιτηταί αιτούνται την διαγραφήν της γραφής της λέξεως alisida εκ του εμπορικού των σήματος αρ. 21118 και την αντικατάστασιν της τοιαύτης γραφής με οιανδήποτε άλλην γραφήν μη ομοιάζουσαν.
15. Οι αιτηταί δεν ενίστανται εις την ύπαρξιν της λέξεως alisida επί του εμπορικού σήματος αρ. 21118 των καθ'ων η αίτησις νοουμένου ότι η γραφή της δεν θα είναι η ιδία με εκείνην της γραφής του εμπορικού σήματος των αιτητών adidas."
Krashias Shoe Factory Ltd., filed a counter-statement on 15th June 1983, in support of their registration and they based their objections on the following propositions:-
"1. Το υπ' αρ. 21118 εμπορικόν σήμα συνίσταται εκ της λέξεως alisida & device και ουδεμίαν σχέσιν ή ομοιότητα έχει με το εγγεγραμμένον σήμα των αιτητών adidas & device.
2. Το όνομα adidas οπτικώς, ακουστικώς και εννοιολογι-κώς διαφέρει εκ διαμέτρου από το όνομα alisida το οποίον υποδηλοί διαφορετικήν ιδέαν και έννοιαν.
3. Τα προϊόντα επί των οποίων χρησιμοποιούνται τα αντίστοιχα ως άνω εμπορικά σήματα καταναλώνονται υπό αγοραστικού κοινού ευρισκομένου εις θέσιν ευκρινώς να διακρίνη και διαχωρίζη τα ως άνω ρηθέντα σήματα.
4. Το σχήμα τριφυλιού των αιτητών όπερ είναι εγγεγραμμένον ομού μετά της λέξεως adidas πόρρω απέχει από του να ομοιάζει ή προσομοιάζει προς τον κόμβον της αλυσίδας όστις, είναι εγγεγραμμένος και χρησιμοποιείται πάντα με το όνομα 'alisida'.
5. Λαμβανομένων υπ' όψιν όλων των περιστάσεων ουδεμία περίπτωσις υπάρχει συγχύσεως ή πλάνης του ενός μετά του άλλου σήματος.
6. Οι αιτηταί κωλύονται από του να εγείρουν την παρούσαν αίτησιν μετά την πάροδον και χρήσιν του εμπορικού σήματος alisida & device διά τριετίαν περίπου."
The applicants filed on 22nd December, 1983, 23rd December, 1983, and 20th March, 1984, affidavits by NicosSoleas of Limassol, a certain Costas Miltiadous, who is not described, EleftheriosMettis, who is not described and by MariosAgathagelou; a P.T. teacher.
The Respondents in that application, on the other hand filed on 20th January, 1984 and 23rd January, 1984 affidavits by MichalakisKrashias, their Director, Andreas Eleftheriou, a P.T. teacher, YiolaSymeonidou, a P.T. teacher, trainer of the female section of APOEL Sporting Club, and by Zacharias Panayides, shopkeeper selling athletic and other kinds of shoe products since 1967.
At the hearing before the Registrar on 18th October, 1984, counsel for the parties addressed in extenso on the issues raised in that application.
The Registrar found that the applicants were an "aggrieved person" under section 33(1) of the Law, but they did not discharge the onus cast on them to show sufficient reputation of their trade mark No. B 13340 to invoke the provisions of section 13 of the Law and they did not place before him sufficient material upon which he could conclude that the existence on the register of the Respondents trade mark No. 21118 is likely to lead to confusion within the meaning of the decision of George Angus case and he refused the application.
Section 33 in dependence of which the application for rectification was made provides:-
"33.(1) Any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without sufficient cause or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Court or, at the option of the applicant and subject to the provisions of section 51, to the Registrar, and the Court or the Registrar, as the case may be, may make such order for making expunging or varying the entry as they may think fit.
(2) The Court or the Registrar, as the case may be, may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register."
This is identical to section 32 of the English Trade Marks Act, 1938.
Only a "person aggrieved" has a locus standi and is entitled to make application to have the register rectified. This phrase has been very liberally construed and, except, perhaps, in the case of a mark consisting of a name it would be difficult to find any person engaged in the trade concerned, or any allied or connected trade, which is prevented by the qualification which it requires from moving to rectify the register. The persons who are aggrieved are - it is held - all, persons who are in same way or other substantially interested in having the mark removed - where it is a question of removal - from the register.
In rectification proceedings the onus of proof is on the applicants.
The Registrar in the elaborate sub judice decision directed himself to the law applicable. He referred to section 13 (section 11 of the English Act), to the test formulated under the English section 11 by Evershed J.; as he then was, in Smith Hayden and Co. s Application 63 R.P.C. 97, at p. 101, lines 3950, indeed as modified by Lord Upjohn in "BALI" Trade Mark [1969]R.P.C. 472. The Registrar said at p. 3:-
"I adopt them and may be adapted to the facts of this rectification case as follows:
(A) Section 13 (S. 11 of the English Act): Having regard to the user of the Applicants of their trade mark No. B 13340 am I satisfied that the use by the Respondents of their mark No. 21118 as registered in a normal and fair manner in connection with the goods for which they have registration will not be reasonable likely to cause deception and confusion amongst a substantial number of persons?"
He referred, also, to the date at which the inquiry should be directed under section 13, which is the time of registration and that in cases of application for expunction it is at any time, if the registered mark is disentitled to protection in a Court of justice. He further referred to passages from Kerly's Law of Trade Marks, 10th Edition, relating to the mark becoming deceptive and that where the mark was incapable of registration it must be removed. He addressed his mind to the case of GE Trade Mark [1973] R.P.C. 297, on the principles regarding the legal status under the law of a registered trade mark, the use of which is likely to cause confusion, and at p. 298 of the report, where the House of Lords held:-
"(i) The fact that the mark is entered upon the register is prima facie evidence of the validity of the original registration and of the right of the registered proprietor to the exclusive use of the mark, subject however to the rights of concurrent user by any registered proprietor of an identical mark or one nearly resembling it.
(ii) If the mark was likely to cause confusion at the time when it was first registered it may be expunged from the register as entry made in the register without sufficient cause unless the proprietor of the mark at that time would have been entitled to have it entered on the register by reason of his honest concurrent use of the mark as a trade mark before the original registration of the mark.
(iii) If the likelihood of causing confusion did not exist at the time when the mark was first registered, but was the result of events occurring between that date and the date application to expunge, it the mark may not be expunged from the register as an entry wrongly remaining on the register, unless the likelihood of causing deception resulted from some blameworthy act of the registered proprietor of the mark or of a predecessor in title of his as registered proprietor.
(iv) Where a mark is liable to be expunged under (ii) or (iii) the court has a discretion whether or not to expunge it and as to any conditions of limitations to be imposed in the event of its being permitted to remain on the register."
The Registrar also noted, took into consideration and applied what was said by the House of Lords in the case of "BALI" Trade Mark [1969] R.P.C. 472 on the question of likelihood of deception or confusion relative to rectification proceedings and particularly by Lord Upjohn at p. 473 and 496-497:-
"(5) That to establish that a mark offended against section 11 it was necessary only to show the likelihood of deception or confusion, and not necessary to show something further, such as some possible, probable or certain success in a passing off action."
"What, then, is the test? This must necessarily be a question of fact and degree in every case. I am content in amplification of the test laid down by Evershed, J. to take the test as in effect laid down by Romer, J. in Jellinek's Trade Mark [1946] 63 R.P.C. 59 at page 78.
It is not necessary in order to find that a mark offends against section 11 to prove that there is an actual probability of deception leading to a passing off or (I add) an infringement action. It is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source, it is enough if the ordinary person entertains a reasonable doubt, but the courthas to be satisfied not merely that there is a possibility of confusion; it must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the register. And so mutatis mutandis when it is sought to expunge a mark."
Finally he referred to the In re an Application by George Angus & Coy. Ld. for Rectification of the Register of Trade Marks [1943] 60 R.P.C. 29 and cited passages from it, the material part of which reads:-
"But the difficulty which I have in this case is in seeing how the trade in which the Appellants goods are sold and in which the Respondent's goods are sold, is carried on. It seems to me to be impossible for a Court to determine whether the use of these two trade marks is likely to lead to confusion unless the Court is informed by evidence as to the way in which the goods of the Appellants and of the Respondent are sold. I do not know (and there is no evidence which informs me) as to whether goods made by the Appellants and goods made by the Respondent are in the hands of third persons with a view to being sold by those third persons to persons who want to buy them. If that is the case, of course, there is a possibility of confusion;"
The Registrar, however, indeed incorporated in his decision almost the whole judgement in George Angus case.
It is the contention of MrPlatritis that the evaluation of the evidence and all the other material, including the two registered trade marks, which were before the Registrar, was defective. That his finding is contrary to the evidence as set out in the affidavits. That the affidavits proved or disclosed that the existence of the trade mark No. 21118 actually lead to confusion. That the Registrar did not analyze and did not consider each one of the affidavits in his decision. He, further, argued in length that the Registrar disregarded the affidavit evidence adduced by the applicants.
The affidavit evidence, as well as the two trade marks, were before the Registrar. He stated clearly in the sub judice decision that he considered all the material before him. According to the presumption of regularity, which was not displaced by the applicants, the Registrar, took into consideration all the evidence before him.
The Court is an Administrative Court and not an Appeal Court. In determining a recourse it does not interfere with the subjective evaluation of the facts by the administration; it only interferes to review to the extent that the findings of fact are tainted by a misconception of fact, or law, or the administration has exceeded the extreme limits of its discretionary power in the sense that its findings are not reasonably open to it, on the consideration of the material before it in its totality. (See, ChristoforosConstantinides v. The Republic of Cyprus, through the Minister of Finance and/or The Director of Customs &Excise(1988) 3 C.L.R. 2375 and PetrosMatsas v. The Republic of Cyprus, through the Public Service Commission (1988) 3 C.L.R. 1448.
In White Horse v. El Greco (1987) 3 C.L.R. 531, it was said at p.534:-
"It is the well established approach of our Supreme Court, on the basis of the principles governing the exercise of its jurisdiction as an administrative Court in the first instance and on appeal, that it does not interfere with an administrative decision regarding the registrability of a trade mark if such decision was reasonably open to the Registrar of Trade Marks and does not substitute its own evaluation in the place of that of the Registrar (see, inter alia, in this respect, Merck v. The Republic (1972) 3 C.L. R. 548, 564, Seven-Up Company v.The Republic (1973) 3 C.L.R. 612, 621, Curzon Tobacco Co. Ltd. v.The Republic (1975) 3 C.L.R. 363, 369, and on appeal (1979) 3 C.L.R. 151, 158, Beecham Group Ltd. v. Republic (1982) 3 C.L.R 622, 632, P.M. & G. Stavrinides Clothing Industries Ltd. v.The Republic (1983) 3 C.L.R. 98, 107, Effems A.G. v.The Republic (1985) 3 C.L.R. 793, 798 Pepsi Co. Inc. v.The Republic (1985) 3 C.L.R. 1092, 1102 and Fisons Ltd v. The Registrar of Trade Marks (1985) 3 C.L.R. 2318, 2327)."
Having gone through the affidavits and the other material before the Registrar, found in the file Exhibit Z, and bearing inmind the afore judicial pronouncements. I reached the conclusion that the findings of the Registrar were reasonably open to him on consideration of the totality of the material before him.
The contention of MrPlatritis is that the Registrar should not look for evidence of use or reputation of the goods and this is misdirection of law.
I regret I cannot agree with counsel for the applicants. The Registrar did not only cite the statutory provisions and the judicial pronouncements relative to their construction and application, but he did apply them on the facts of this application. There is no misdirection or misconception of law.
Mr. Platritis complained that no due inquiry was made at the time of the registration of the trade mark sought to be rectified because the Searching Officer and the Registrar did not take note of the trade mark of the applicants. The explanation of the Registrar is that there is no such resemblance as to note it on the application of the interested party.
In the present case, on the material before me, having considered carefully the sub judice decision, the grounds put forward by the counsel for the applicants and the grounds given by the Registrar, I have come to the conclusion that there was no misconception of law; a due inquiry was carried out; there was no misconception of fact; the findings of the Registrar were reasonably open to him; he exercised his discretion according to law and not in a defective manner; it was reasonably open to the respondent Registrar to refuse the applied for rectification of the register by part removal.
For the foregoing reasons, this recourse fails and is dismissed.
Let there be no order as to costs.
Recourse dismissed. No order as
to costs.