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ΠΑΓΚΥΠΡΙΟΣ ΔΙΚΗΓΟΡΙΚΟΣ ΣΥΛΛΟΓΟΣ
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(1988) 3 CLR 1110
1988 May 31
[SAVVIDES, J.]
IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION
BRASSERIE DU CARDINAL FRIBOURG S.A.,
Applicants,
v.
THE REGISTRAR OF TRADE MARKS,
Respondent.
(Case No. 647/84)
Trade marks-Rigistrability-Judicial control-Principles applicable.
Trade Mark-TheTrade Marks Law, Cap. 268, sections 11(1) (d) and (e)-Distinctivenessand direct reference to character of the goods-The principlesunderlying such questions-Plough Inc. v. The Republic (1988) 3C.L.R. 145 followed.
Trade Marks-The Trade Marks Law, Cap. 268, section 13-Deception, possibilityof -Plough Inc. v. The Republic (1988) 3 C.L.R.145 followed.
Trade Marks-Registration in another country-Significance.
The facts of this case appear sufficiently in the judgment.
Recourse dismissed.
Costs against applicant.
Cases referred to:
Plough Inc. v. The Republic (1988) 3 C.L.R. 145;
Needle-Tip TradeMark [1973] R.P.C. 113;
White Horse, Distillers v. El Greco DistillersLtd. and Others (1987) 3C.L.R.531.
Recourse.
Recourse against the refusal of the respondent to accept applicant's application for the registration of the word "Moussy" with device as a trade mark in class 32 in respect of their products.
Chr. Theodoulou, for the applicants.
St. Ioannidou (Mrs.), for the respondent.
Cur.adv. vult.
SAVVIDES J. read the following judgment. The applicants, aSwiss company, manufacturers of non-alcoholic beer, ale, porteretc. challenge by this recourse the decision of the respondent dated16th October, 1984, whereby he refused to accept the applicationof the applicants under No. 24377 for the registration of atrade mark in respect of their products in class 32 of the Registerof Trade Marks.
The facts of the case are briefly as follows:
The applicants on 1st December, 1983, applied for the registrationof the word "Moussy'' and the device of two lines and asmall letter in between them all in an oval frame as a trade mark inclass 32 for non-alcoholic beer, ale and porter, mineral and aeratedwaters and other non-alcoholic drinks, syrups and other preparationfor making beverages.
The application having been considered for acceptance was on the 28th January, 1984, objected to by the respondent on the ground that the proposed mark has direct reference to the characteror quality of the goods contrary to the provisions of s. 11(1)(d) of the Trade Marks Law, Cap. 268 and that it is not distinctiveunder s.11 (1 ) (e) and it is also contrary to the provisions of s.13of the same law because the word "Moussy" is a misspelling ofthe word "Mousse" which is found in the French Dictionary ofCollin Robert, 1978, to mean, froth, foam of beer. Also in the French Dictionary Larousse is given as meaning foam formed onthe surface of certain liquids. Also in the Greek/French Dictionary Vassiliou, 1972, it is found "Mousse" as meaning "αφρός" and"Mousseux" as meaning "αφρώδης".
The applicants on the 8th March, 1984, fild a considered replythrough their advocate reserving their right for a hearing if theirapplication was refused again. Having considered the written reply of the applicants the respondent fixed the case for a hearing,which was held on the 27th September, 1984.
After hearing the arguments put forward the respondent decidedthat the objections under s. 11 (1) (d), (e) and s. 13 could notbe waived and consequently refused applicants application.Upon a request for statement of grounds of decision addressed tothe respondent on 30th November, 1984,the respondent gave inwriting the grounds of his decision which, in fact, were the sameas those embodied in his original objection to the registration butwith more detail answering all points raised by counsel for applicants.As a result applicants filed the present recourse challengingthe above decision.
The grounds of law on which the recourse is based are to theeffect that the sub judice decision is not duly reasoned; the respondentmisdirected himself and/or proceeded on wrong principlesin arriving at his decision; that he acted under a misconceptionof law and fact; that he failed to consider whether theproposed for registration mark was inherently adapted to or capable of distinguishing applicantsgoods; that he wrongly translatedthe word constituting the mark and/or made wrong assumptionsabout its meaning; that he failed to take into consideration that theproposed trade mark is famous and registered in other countries and finally that he, himself, exercised his discretion wrongly.
By his written address counsel for applicants expounded onhis grounds of law and submitted that the word "Moussy" is aninvented word and that not only it is distinctive as such but alsothe combination with the figurative elements shown on the label clearly makes it distinctive. He further contended that the respondentarbitrarily proceeded to make assumptions about the French word in considering that the words "Moussy" and "Mousse" are the same and wrongly considered that the application was for the registration of "Mousse" instead of "Moussy". He further contended that the trade mark in question is registered in a number of English speaking countries such as Ireland, Canada and is used in a number of other countries such as the United States and it was also registered in other English speaking countries such as the United States of America, South Africa, Australia and that England also is in the process to accept it and the Registrar failed to take into consideration such registration in other countries.
Counsel also argued that the trade mark in question has no referenceto the character or the quality of the goods and concluded by submitting that the decison of the Registrar was not duly reasoned and that he misdirected himself and/or proceeded on wrongprinciples in arriving at his decision and also that he acted under a misconception of law and fact and. failed to consider whether theproposed for registration mark was inherently adapted or capable of distinguishing the applicants goods.
Counsel for respondent rejected the arguments of counsel forapplicants and submitted that the decision complained of was properly and lawfully taken by the respondent in the proper exercise of his powers and discretion under the relevant legislationhaving taken into consideration all relevant facts and circumstances and consequently this Court should not interfere with his discretion since it is obvious that due weight has been given by him to all material facts, there was no misconception of law or fact on his part and no excess or abuse of power by him.
Counsel for respondent expounded on the grounds of the decisionof the Registrar and submitted that they were well founded and that it was reasonably open to the respondent to arrive at his decision as he did in the present case.
The question of distinctiveness and direct reference to the character and quality of the goods under s. 11 and the possibility of deception or confusion under s. 13 of the law as well as the principles underlying them have been considered in a number of cases by this Court in which the English Case Law on the matter has been reviewed. A revision of these cases appears in the recent decisionof the Full Bench in RevisionalAppeal No. 523 Plough Inc. v. The Republic of Cyprus through the Registrar of Trade Marks (1988) 3 C.L.R. 145 and I find it unnecessary to repeat them.
The question of registration of a mark in a foreign country and the bearing of such registration in Proceedings for a registration in Cyprus has also been considered in Pough Inc. (supra) in which reference is made to Kerly's Law of Trade Marks and Trade Names at p. 123, para. 8-67 which reads as follows:
"Use of registration abroad.
On an application to register a mark for use in the UnitedKingdom, it is distinctiveness in the United Kingdom that is in question. Thus extent of registration and use of the mark abroad are of secondary significance, if any".
Useful reference may be made in this respect to the decision inNeedle-Tip Trade Mark [1973]R.P.C. 113 and in particular thefollowing at p. 118:
"It seems to me that the mere fact that a mark has been registeredin a foreign country has little or no bearing on whether the mark is capable of distinguishing the goods of the applicant in this country. Registration in the foreign country would have been allowed according to the law and practice in that countrywhich may differ from, that of this country and may have been allowed in the light of particular circumstances and trading conditions in that country. It may be that, in a case where a mark applied for here has already been registered in a foreigncountry with a system of trade mark law similar to our own, if, a written decision of the foreign tribunal allowing registration in the foreign country and which showed the grounds of the decision and the matters taken into consideration were to beadduced on the application here, it might be persuasive as a piece of reasoning as to whether the mark should be registered here, if, but only, if, similar considerations applied in this country; but that, it seems to me is as far as registration in aforeign country could be relevant to registrability here. It is to be noted that in Swift's case the Divisional Court was influencedby what was referred to as a scholarly and persuasive judgment of the Full Court of the High Court of Australia. Onthe present appeal, however, all that has been relied upon is the mere fact of the registration in the countries mentioned and that mere fact, as I have already stated, is of little or no bearing on whether the mark is capable of distinguishing the applicants goods in this country."
The approach of our Supreme Court as to when the Courtshould interfere with an administrative decision regarding the registrability of a trade mark has been recently reviewed by the Full Bench in Revisional Appeal No. 505 White Horse Distillers Ltd. v. El Greco Distillers Ltd. and Others (1987) 3 C.L.R. 531 in which it was held that the Supreme Court on the basis of the principlesgoverning the exercise of its jurisdiction as an administrativeCourt in the first instance and on appeal does not interfere with an administrative decision regarding the registrability of atrade mark if such decision was reasonably open to the Registrar of Trade Marks and it does not substitute its own evaluation in theplace of that of the Registrar.
In the present case, on the material before me and having carefullyconsidered the reasons given by the Registrar of TradeMarks for refusing the registration of the trade mark in question Ihave come to the conclusion that it was reasonably open to him to decide as he did and his decision is, therefore, affirmed.
Recourse dismissed with costs
infavour of respondent.