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ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ
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(1989) 3A CLR 901
1989 August 5
[STYLIANIDES, J.]
IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION
ALFRED DUNHILL LIMITED,
Applicants,
v.
THE REGISTRAR OF TRADE MARKS,
Respondents.
(Case No. 322/82)
Constitutional Law - Constitution - Laws existing at the time when the Constitution came into force - Constitution, Art. 188 - The Trademarks Law, Cap. 268, sections 19 and 50 - Being inconsistent with the jurisdiction under Art. 146 of the Constitution, they were not saved by Art. 188 - As from Independence Day they ceased to be in force.
Judicial control - Registrability of Trademark - Interference by Court - Principles applicable - Court does not interfere, if decision reasonably open to Registrar, provided the latter gave due weight to all material facts and did not act under a misconception of law or fact or in excess or abuse of power.
Trademarks - Registrability - The Trademarks Law, Cap. 268, section 11(3)(a) and (b) - Use by advertisement - Whether use in the sense of section 2(2), section 11(2) or section 11(3)(b) of Cap. 268 - Question determined in the positive.
By means of the present recourse the applicants impugned the decision of the Registrar of Trademarks whereby he refused to register a Trademark in class 34 for cigarettes on ground that the mark in question consisting of two colours only, namely gold and maroon, was not distinctive and contravened section 13 of Cap. 268.
The applicants filed voluminous evidence claiming that their mark has become in fact distinctive by reason of long use in Cyprus. The Registrar rejected the contention upon a finding that such use consisted of advertisement only in Cyprus. The Registrar was of the opinion that such advertisement did not amount to use, as required by Law.
Having analysed the authorities on the subject, the Court reached a different. conclusion and, therefore, annulled the sub judice decision on the ground of misconception of Law.
Sub judice decision annulled. No order
as to costs.
Cases referred to:
I. W.S. Nominee Co. Ltd. v. Republic (Registrar of Trade Marks (1967) 3 C.L.R.582,
E. Merck v. Republic and Another (1972) 3 C.L.R. 548,
White Horse v. El Greco (1987) 3 C.L.R. 531.
Recourse.
Recourse against the refusal of the respondents to register applicant's trade mark in respect of cigarettes in Class 34 of the Register of Trade Marks.
G.M Nicolaides, for the Applicants.
St. Ioannides (Mrs), Counsel of the Republic B, for the Respondent.
Cur. adv. vult.
STYLIANIDES, J. read the following judgment. The applicants by means of this recourse challenge the validity of the decision of the Registrar of Trade Marks (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 powers of Appeal Court under sections 19 and 50 of the Trade Marks Law, Cap. 268 (the "Law").
With respect, the part of section 19, providing for appeal, and the whole section 50 of the Law, being inconsistent with a recourse under Article 146 of the Constitution, were not saved by Article 188 and, as from Independence Day, they are not in force - (I. W.S. Nominee Co. Ltd. v. Republic (Registrar of Trade Marks) (1967) 3 C.L.R. 582; E. Merck v. Republic and Another(1972) 3 C.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 Article 146.
It is a 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 is reasonably open to the Registrar and does not substitute its own evaluation in the place of that of the Registrar - (White Horse v. El Greco (1987) 3 C.L.R. 531, at p. 534, where the previous Case Law is 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 misconception of law or fact and it was not exercised in excess or abuse of power - (Merck v. Republic (supra) at p. 564).
The applicants based their case, inter alia, on the ground that the sub judice decision is tainted with misconception of law.
The relative facts are:-
The applicants - Alfred Dunhill Limited, of 30 Duke Street, St. James, London, filed an application, under No. 21570, for the registration of-a mark as a trade mark in Class 34, in respect of cigarettes.
The Registrar took objection to the mark, on the ground that it is not distinctive, as required by section 11(1)(e) of the Law, in that the colours comprising the said mark are common to the trade for cigarettes and that it contravenes section 13. The mark consisted of the colours gold and maroon without any other matter.
The applicants claimed that their mark has become in fact distinctive by reason of long use in Cyprus, is identified with them and is sufficient to identify their products in the cigarette market of this country.
The Registrar proceeded to determine the application under section 11(3)(a) and (b), which reads:-
"(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."
This statutory provision is identical to section 9(3)(a) and (b) of the English Trade Marks Act. 1938.
The applicants filed a considerable volume of affidavit evidence, which showed that the proposed mark had been used only by way of advertisement in this country.
The Registrar took the view that use by advertisement is not use in the sense of section 2(2), 11(2) or section 11(3)(b) of the Law. The relevant part of the grounds of decision reads:-
"Such evidence shows that the mark proposed for registration has been used by way of advertisement only and not in. conjunction with the goods. Considering and evaluating therefore the evidence of the trade mark propounded for registration which is confined to advertisements only, I find 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, which can be taken into consideration for the purposes of sec. 11(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. para 2-20, where it is stated as follows:
Use in relation to goods
The words 'applied or attached to goods in Kerly's definition were amply justified by the authorities, and a strict view as to what amounted to use of a trade mark was taken in construing words in former Acts. Under the Act of 1905 it was held by the Registrar that, where actual use of a trade mark had to be proved, an applicant had not used a trade mark if the user had been confined to advertisements;....'
Section 2(2) of the Law - a replica of section 68(2) of the English Act - provides that references in the law to the use of a mark in relation to goods shall be considered as references to the use thereof upon, or in physical or other relation to goods.
The expression "use in relation to goods" is found both in sub-section (2) of section 11, which defines "distinctive" arid subsection (3) herein above quoted.
The passage from Kerly's on Trade Marks, 10th Edition, cited and applied by the Registrar, contains the statement of the Law under the Act of 1905.
In consecutive editions of Kerly (vide 10th Edition, para 2- 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:-
"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 wider than in connection with and were suggested by the Departmental Committee in order to include the use of a trade mark in advertisements.
Many of the old decisions as to what amounted to a use of a trade mark are, accordingly, now of historical interest only."
In the 12th Edition, para 2-06, P. 10, the present position of the Law is stated as follows:-
"Use in relation to goods or services
The words in relation to replaced in 1938 the phrase 'in connection with of the 1905 Act; they were intended to include use in advertisements, something previously considered by the Registrar not to be actual use as a trade mark. The older cases take an even narrower view. Thus many of the pre-1938 cases are of historical interest only on this matter. The phrase use in relation to goods is defined in section 68(2) as meaning use thereof upon, or in physical or other relation to goods; upon which the House of Lords has observed... applied to the surface of the goods ('use upon') or incorporated in the structure of the goods ('use in physical relation to').
The oral use of a trade mark has never been held to be an infringement and is excluded from the definition by section 68(2).
It must be observed that the words are: 'in relation to goods' 'in relation to services', 'so that there must be, at least, an intention to make available actual goods or services in relation to which the mark is. to be used. This-may be material in regard to the questions already mentioned as to the locality of the use. Advertisements often reach localities for which they are not primarily intended. Thus, foreign periodicals in which goods are advertised under a trade mark often have a circulation in this country which is by no means negligible. Such advertisements may be relevant to the question whether a trade mark has acquired a reputation in this country, e.g. under section 11 (Chap. 10). The casual circulation of such periodicals would not by itself constitute a use of the trade mark in relation to goods in the United Kingdom. Where advertisements of goods produced abroad are relied upon to establish the use of the trade mark, it must be possible to identify the goods advertised as goods 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 services are to be relied upon as use, 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 modem. world, reputation of trade marks has become widely used in advertisements, so as to familiarize buyers with the market, though the application of trade marks to the actual goods or to the packages containing them still constitutes theft basic function. A trade mark is meant to indicate to potential buyers that the goods were made by the proprietor of the trade mark and not by any other manufacturer.
This misconception of law prevented the Registrar. From duly taking into account, all relevant considerations and, consequently, his relevant discretionary powers were exercised in a defective manner.
In the light of the foregoing, the sub judice decision has to be annulled. Therefore, it is unnecessary to decide the other grounds put forward against the validity of the sub judice decision.
The sub judice decision is hereby declared null and void and of no effect.
No order as to costs.
Sub judice decision annulled. No
order as to costs.