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ΚΕΙΜΕΝΟ ΑΠΟΦΑΣΗΣ:

(1989) 3A CLR 810

1989 July 21

 

[STYLIANIDES, J.]

IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION

SANYO ELECTRIC CO. LTD.,

Applicants,

v.

THE REPUBLIC OF CYPRUS, THROUGH THE REGISTRAR

OF TRADE MARKS,

Respondents.

(Case No. 37/85)

General principles of administrative law - Administrative act - The making of - The four necessary steps - The study, if necessary, interpretation of the relevant legal provisions, ascertainment of the correct facts and application of the Law to the facts - The ascertainment of the true facts pre-supposes duty to make a reasonably necessary inquiry - Registration of Trademark - Refusal to extend time for filing evidence - In the circumstances such refusal deprived the Registrar from having before him all relevant material - Therefore he could not make a due inquiry.

Misconception of fact - Failure to take into consideration material facts - Annulment of relevant administrative act.

The applicants applied for registration in Part A of the Trademarks Registry in classes 7, 9 and 11 of a Trademark consisting of the word FISHER, written in capital letters, with the device of a bird holding a music load.

The Registrar objected to on the ground that it lacked distinctiveness and it was contrary to the provisions of section 13 of Cap. 268 because the word FISHER is a common surname.

The applicant applied and was granted time within which to file an affidavit as regards the aforesaid Trademark. In any event applicants disclaimed use of the word FISHER.

Applicants applied for an extension of time within which to file the affidavit. The Registrar refused the application and issued the sub judice decision on the ground that the word FISHER is a common surname.

Hence this recourse. The two grounds upon which the Court annulled the sub judice decision appear sufficiently in the hereinabove Headnotes.

Sub judice decision annulled. No order

as to costs.

Cases referred to:

Photiades and Co. v. Republic of Cyprus through The Minister of Finance 1964 C.L.R. 102,

Mytides and Another v. Republic (1983) 3 C.L.R. 1096,

Davidoff v. Republic (1986) 3 C.L.R. 2232,

Xapolytos and Others v. Republic (Council of Ministers) (1967) 3 C.L.R. 703,

Transocean Marine Paint Association v. E.C. Commission [1974] 2 C.M.L.R. 459.

Recourse.

Recourse against the refusal of the respondent to, register applicants' trade mark "FISHER" written in capital letters with the device of a bird holding a music note as a trade mark under classes 7,9 and 11 of Part A of the Register of Trade Marks.

A. Dikigoropoulos, for the Applicants.

St. Ioannides (Mrs), Counsel of the Republic B', for the Respondents.

Cur. adv. vult.

STYLIANIDES, J. read the following judgment. The applicants by means of this recourse seek the annulment of the decision of the Registrar of Trade Marks (the "Registrar") to refuse to register the applicants' trade mark in Classes 7, 9 and 11 of Part A, in applications 23601, 23602, 23603, communicated to them by letter dated 7th November, 1984.

The applicants are a company of limited liability, incorporated in Japan, trading in electronic and other goods manufactured by them and sold in Cyprus from 1981 onwards.

By applications 23601, 23602 and 23603, dated 18th March, 1983, the applicants requested the registration of their trade mark "FISHER", written in capital letters, with the device of a bird holding a music note, as a trade mark in Classes 7, 9 and 11.

The Registrar requested particulars of the goods for which the applications were made and details and/or particulars were given on 29th March, 1983.

On 22nd April, 1983, the Registrar informed the applicants that their applications, having being considered for acceptance, were objected to, on the ground that the proposed trade mark is, in accordance with the provisions of section 11(1)(d) and (e) of the Trade Marks Law, Cap. 268 (the "Law"), a common surname and it lacks distinctiveness and that it was contrary to the provisions of section 13.

The applicants applied for a hearing through their then advocate, who is different from their advocate in the present recourse.

On 28th April, 1984, when the case was set down for hearing, on the application of the applicants' advocate, the three applications were consolidated. The applicants' advocate submitted, not by affidavit, four lists showing the use of the trade mark in Cyprus, which were not signed. He, further, said at the hearing that the applicants accepted to disclaim the word "FISHER".

On 18th May, 1984, the Registrar by letter requested evidence of user in the form of an affidavit and informed applicants' advocate that such evidence ought to be filed by the 17th June, 1984.

In view of the fact that the said affidavit could not have been sworn by any agent or representative of the applicants in Cyprus, the advocate for the applicants requested in writing extension of time for three months to file such evidence.

The Registrar's letter was translated and forwarded to the Head Office in Japan.

Applicants' advocate, being unable to obtain the evidence in time before the 17th September, due, inter alia, to the summer vacations, on 15th September, 1984, requested in writing for a further extension of time to November, 1984, for filing affidavit.

No reply was given to this letter.

On 29th October, 1984, there is a note in each one of the said applications, on the identical letters of applicants' counsel: "objections and, (signature), 29/10/84".

On 7th November, 1984, a letter was sent by the Registrar to the applicants' counsel, informing him that his request for extension of time could not be acceded; in a second paragraph he was informed that the Registrar considered the aforesaid applications and, on the facts before him, found that the objections could not be waived and refused the applications for registration.

As a result this recourse was filed.

The grounds of law on which this recourse is based are that the Registrar failed to carry out a due inquiry, deprived the applicants of the opportunity to be heard and exercised his discretionary powers wrongly and contrary to law. He violated the rules of natural justice. He misdirected himself on the law and, particularly, the meaning and effect of sections 11, 13 and 14 and ignored completely the relevant provisions of Law 66/83, whereby provisions of the Paris Convention for the Protection of Industrial Property of 1883, as subsequently revised, was ratified. The Registrar acted under a misconception of fact.

Counsel for the applicants submitted that the Registrar is an administrative authority, entrusted with discretionary powers. In the exercise of such powers, he has to comply with the Law, including the principles of administrative law, which obtain in this country after the establishment of the Republic. The Registrar misdirected himself and assimilated the exercise of his functions with that of the English administrative authorities, where the principles of administrative law, in this respect, are different. He deprived the applicants, in the way he acted, of the opportunity to be heard in a case where a decision affecting his interest was taken by the Administration.

Section 41 of the Law provides that:-

"41. Where any discretionary or other power is given to the Registrar by this Law or the rules, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required so to do within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard."

He, also, referred to "The Right of Defence before the Administrative Authorities" by M.D. Stassinopoulos, 1974, and submitted that no decision of the Administration should be taken in a case like the present one, without giving the citizen the right and the opportunity to present his case. This is the right of defence.

Counsel for the Registrar argued that evidence should have been in writing and that statements of advocates are not accepted. That extension of time was granted to applicants to produce such affidavit evidence, which is required by section 52, which provides that "in any proceeding under this Law before the Registrar, the evidence shall be given by affidavit in the absence of directions to the contrary".

An administrative authority has a duty to make the reasonably necessary inquiry for the purposes of ascertaining the correct facts to which- the relevant legislation is to be applied. The ascertainment of the true factual situation is one of the four necessary steps in the making of an administrative act, as follows: the study and, if necessary, interpretation of the relevant legal provisions; -ascertainment of the correct facts; application of the law to the facts; and decision on the course of action (Vide "The Law of Administrative Act" by Stassinopoulos (1951) p. 249; Photos Photiades and Co. and The Republic of Cyprus through The Minister of Finance (1964) C.L.R. 102; Mytides and Another v. Republic (1983) 3 C.L.R. 1096).

Even if, from the strictly procedural point of view, the proceedings before the Registrar were conducted in accordance with the Trade Marks Rules, I am of the opinion that the refusal of the Registrar to grant further extension of time to the applicants to submit the affidavit evidence in support of the registration of their trade mark, prevented the Registrar from having before him all relevant material and, thus, he was deprived of the possibility of making a due inquiry in relation to the application for the registration of the trade mark of the applicants. Lack of due inquiry on the part of the administrative organ results in the invalidity of its relevant decision - (Davidoff v. Republic (1986) 3 C.L.R. 2232; Mytides case (supra)).

In Styllis Xapolytos and Others v. Republic (Council of Ministers) (1967) 3 C.L.R. 703, Triantafyllides, J., as he then was, said the following at pp. 709-710:-

"It was a matter of proper administration for the Council of Ministers to have decided, on whether or not the sub judice proclamation were to be made, after weighing duly all material considerations, including the objections of the Applicants; it was, moreover, a matter of natural justice, in a case of this nature, for the said objections to be considered by the Council of Ministers. In the circumstances already explained in this Judgement, the Council was not enabled to act as required by proper administration and natural justice; and it was, also, led to act on the basis of an incomplete picture of the matter."

(See, also, Transocean Marine Paint Association v. E.C. Commission [1974] 2 C.M.L.R. 459, at p. 477, and the opinion of Advocate General Warner, pp. 469-471.-

The Registrar prevented himself from carrying out a proper inquiry and reached the sub judice decision on the basis of an incomplete picture of the matter.

The sub judice decision shall be annulled for lack of due inquiry.

It is, however, liable to annulment for another ground.

On 28th April, 1984, the advocate appearing for the applicants stated that the applicants accepted a disclaimer of the word "FISHER". From the letter - objection of the Registrar, dated 22nd April, 1983, to which reference was made above, the objections were taken basically because of this word - surname.

The decision of 29th October, 1984, communicated to counsel on 7th November, 1984, coupled with the address of counsel for the Registrar, leaves no doubt that the Registrar failed to take into consideration the applicants' willingness to disclaim the word "FISHER".

The sub judice decision and the whole argumentation before me, in two written addresses of the counsel for the Registrar, are based on the word "FISHER". Thus the Registrar failed to take into consideration facts material for determination of applicants' application and took into consideration a matter that he should not. The decision is thus faulty for misdirection of fact, abuse and/or excess of power.

For the foregoing, the recourse succeeds, the sub judice decision is declared null and void.

Let there be no order as to costs.

Sub judice decision annulled. No

order as to costs.

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