(1984) 3 CLR 219
[*219] 1984 February 25
[DEMETRIADES, J.]
IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION
ROC INTERNATIONAL S.A.,
Applicants,
v.
THE REPUBLIC OF CYPRUS, THROUGH
1. THE MINISTER OF COMMERCE AND INDUSTRY,
AND/OR
2. THE REGISTRAR OF TRADE MARKS,
Respondents.
(Case No. 156/82).
Administrative Law—Inquiry—Due inquiry—Failure to make results in the invalidity of the relevant administrative action—Objection of Registrar of Trade Marks to registration of the words “Sensilis” in Part “A” of the Register of Trade Marks—Who failed to carry out a due inquiry as to the meaning and the understanding of such word by the ordinary people of Cyprus—But looked at its interpretation in a Latin dictionary and at its meaning in an English dictionary and disregarded its meaning in Greek—Objection not open to the Registrar—Annulled.
Trade Marks—Registration—Word “Sensilis”—Objection to registration by Registrar of Trade Marks—Who looked at its meaning in a Latin and in an English Dictionary and disregarded its meaning in Greek—And failed to carry out a due inquiry as to the meaning and understanding of such word by the ordinary people of Cyprus—Objection annulled.
By an application dated the 16th March, 1981, the applicants, through their agents in Cyprus, applied to the respondents for the registration in part “A” of the Register of Trade Marks of the word “Sensilis” in respect of “Pharmaceutical, veterinary and sanitary substances; infants’ and invalids’ foods; plasters, material for bandaging; material for stopping teeth, dental [*220] wax; disinfectants; preparations for killing weeds and destroying vermin”.
The respondent Registrar informed the applicants that by virtue of the provisions of section 11(1)(d) and (e) of the Trade Marks Law, Cap. 268, he could not accept their application because the trade mark submitted for registration—
(a) had direct reference to the character or quality of the goods,
(b) lacked any distinctive nature and
(c) might have caused deception or confusion.
Hence this recourse.
In taking the sub judice decision the respondent Registrar looked at the interpretation of the word “Sensilis” in a Latin dictionary and at its meaning in English which he traced in the Webster Dictionary and disregarded its meaning in Greek.
Held, that it is an established principle of Administrative Law that failure to make a due inquiry results in the invalidity of the relevant administrative action; that the Registrar of Trade Marks, by simply looking at the interpretation of the sub judiceword in a Latin dictionary and its meaning in English, which he traced in theWebster Dicitionary, and by disregarding its meaning in Greek, the language spoken by the people here, has failed to carry out a due inquiry as to satisfy himself whether the word “Sensilis” has direct reference to the character and quality of the goods; that, therefore, the objection of the respondent Registrar to the registration of the word“Sensilis” in Part “A” of the Register of Trade Marks was not open to him, as he had not carried out a due inquiry as to the meaning and the understanding of such word by the ordinary people of Cyprus; accordingly the sub judice decision is declared null and void and of no effect.
Sub judice decision annulled.
Cases referred to:
Mikellidou v. Republic (1981) 3 C.L.R. 461 at p. 470;
HadjiPaschali v. Republic (1980) 3 C.L.R. 101; [*221]
Antoniou v. Republic (1978) 3 C.L.R. 308;
Tourpeki v. Republic (1973) 3 C.L.R. 592;
Ioannides v. Republic (1972) 3 C.L.R. 318;
Photos Photiades and Co. v. The Republic, 1964 C.L.R. 102 at pp. 112-113.
Recourse.
Recourse against the refusal of the respondents to register in part “A” of the Register of Trade Marks of the word “Sensilis” in respect of their products.
G. Platritis, for the applicants.
R. Gavrielides, Senior Counsel of the Republic, for the respondents.
Cur.adv. vult.
DEMETRIADES J. read the following judgment. By their application dated the 16th March, 1981, the applicants, through their agents in Cyprus, applied to the respondents for the registration in part “A”of the Register of Trade Marks of the word“Sensilis” in respect of “προιόντα φαρμακευτικά, κτηνιατρικά και υγιεινολογικά, προιόντα διαίτης δια παιδιά και ασθενείς. Έμπλαστρα, υλικόν επιδέσμων. Ύλαι σφραγίσεως οδόντων και αποτυπωμάτων οδόντων, απολυμαντικά, παρασκευάσματα προς καταπολέμησιν ζιζανίων και επιβλαβών ζωϋφίων”. (“Pharmaceutical, veterinary and sanitary substances; infants’ and invalids’ foods; plasters, material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin”).
By a letter dated the 28th May, 1981, the respondent Registrar of Trade Marks informed the agents of the applicants that by virtue of the provisions of section 11(1)(d) and (c) of the Trade Marks Law, Cap. 268, he could not accept their application because the trade mark submitted for registration—
(a) had direct reference to the character or quality of the goods, and
(b) lacked any distinctive nature.
By his said letter the Registrar of Trade Marks informed the applicants that his objection was, also, based on section 13 of Cap. 268, which reads as follows:- [*222]
“13. It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a Court of Justice, or would be contrary to law or morality, or any scandalous design”.
As a result of the contents of the above decision, the applicants requested to be given the opportunity to be heard.
On the 29th January, 1982, the respondent Registrar of Trade Marks, after having heard counsel for the applicants on the 25th January, 1982, informed the agents of the applicants that though their application was re-examined on the basis of what was said during the hearing, it was not possible for him to accept it and that his objection referred to in his letter of the 28th May, 1981, continues to exist and is confirmed.
In view of the above decision the applicants filed the present recourse by means of which they pray—
(a)Declaration by the Court that the decision of the Registrar of Trade Marks dated 29.1.1982, and communicated to the applicants through their agents in Cyprus and by which the Registrar did not accept for registration in Part “A” of the Register their application No. 21412 SENSILIS is void and of no effect whatsoever as decided against the law, the provisions of the Constitution and/or in excess or abuse of powers.
(b) Costs.
The applicants based their application on the following grounds of Law:
“The decision of the Registrar of Trade Marks by which he refused to accept for registration in Cyprus the above mentioned application is against the provisions of sections 11, 12, 13, 19 and other sections of the Trade Marks Law, Cap. 268 and the Trade Marks Rules, 1951.
The decision of the Registrar is, also, against the provisions of the Constitution.
The word SENSILIS is a good and registrable mark [*223] and it was accepted for registration in Cyprus in Class 3 without the production of any evidence of user.
The discretion of the Registrar of Trade Marks was exercised wrongly and/or it was based on wrong principles or criteria”.
During the hearing of the case counsel for the applicants abandoned the ground of law which was based on unconstitutionality.
The respondents opposed the application and submitted that the Registrar had rightly objected to the registration of the word “Sensilis” as it had direct reference to the character or quality of the goods, it was devoid of any distinctive character and might have caused deception or confusion because of its meaning, which was found in a Latin dictionary to mean: adjective capable of sensation, sensitive.
Having carefully gone through the arguments of counsel appearing in this case, I have come to the conclusion that the only issue that poses for decision is whether the Registrar exercised his discretion to object to the registration of the word “Sensilis” wrongly and/or based his said objection on wrong principles or criteria. I have reached this conclusion as counsel for applicants did not argue before me why the objection of the registrar is contrary to sections 12, 13 and 19 of Cap. 268, though he did put forward arguments that the said word did not contravene the provisions of section 11(1)(d), which read:
“11(1) In order for a trade mark to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:-
……………………………………………………………………………………..
(d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
……………………………………………………………………………………….”
As I have already said, the Registrar based his objection on the meaning in English of the word “Sensilis” as this is given in a Latin dictionary. I have gone through the “A Copius [*224] and Critical LATIN—ENGLISH LEXICON by E.A. Andrews LL.D., new Edition of the 1853 Ed.”, and where I found that the interpretation of the word “Sensilis” given is “Sensitive, sensible, i.e. endowed with sensation”.
In Φεξής Λεξικόν Λατινο-Ελληνικόν (Latin-Greek Dictionary by Fexis) the word “Sensilis” appears to mean “αισθητός” which word, according to the Modem Greek-English Dictionary with a Cypriot Vocabulary by A. Kyriakides, 2nd Edition (1909), means “Sensible, perceptible, palpable”.
In Ηλία Ι. Οικονομοπούλου Πρακτικός Οδηγός της Νεοελληνικής ΟΡΘΟΓΡΑΦΙΑΣ κατ’ Αλφαβητικήν Τάξιν, Εκδ. 1902 (Practical Guide of Modern Greek DICTATION in Alphabetical Order (1902) by Elias I. Economopoulos), it appears that the word “αισθητός” (“perceptible”), which is the meaning of the Latin word “Sensilis”, is translated as “Κάμνων αίσθησιν και σημαντικός” (“Noticeable and important”). In Λεξικόν Ελληνικής Γλώσσης Αθανασίου Α. Σακελλαρίου, Τόμος Α-Κ Έκδ.1879 (Dictionary of the Greek Language by AthanassiosSakellarios, Vol. A-K, (1879)) “Αισθητός” (Perceptible”) means “Ο εις την αίσθησιν υποπίπτων και επομένως ευκόλως τον αισθάνεται τις” (“Who can be felt by the senses and therefore one may easily become aware of”).
It is an established principle of administrative law that failure to make a due inquiry results in the invalidity of the relevant administrative action (see, in this respect, Mikellidou v. The Republic, (1981) 3 C.L.R. 461, 470; HadjiPaschali v.The Republic, (1980) 3 C.L.R.101; Antoniou v.The Republic, (1978) 3 C.L.R. 308; Tourpeki v.The Republic, (1973) 3 C.L.R. 592; and Ioannides v.The Republic, (1972) 3 C.L.R. 318).
In the case of Photos Photiades and Co. v. The Republic, 1964 C.L.R. 102, Triantafyllides J., as he then was, in delivering his judgment said (at pp. 112—113) :-
“Deciding the correct facts to which the law ought to be applied by an administrative authority is not, as a rule, the function of an administrative Court, except in those cases where it is alleged that such an authorityhas proceeded to act under a misconception concerning the true facts. [*225]
It need hardly be stressed that 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 Acts” by Stasinopoulos (1951) p. 249)”.
It is my view that the Registrar of Trade Marks, by simply looking at the interpretation of the sub judice word in a Latin dictionary and its meaning in English, which he traced in the Webster Dictionary, and by disregarding its meaning in Greek, the language spoken by the people here, has failed to carry out a due inquiry as to satisfy himself whether the word “Sensilis” has direct reference to the character and quality of the goods.
In view of my above findings, I hold that the objection of the respondent Registrar of Trade Marks to the registration of the word “Sensilis” in Part “A” of the Register of Trade Marks was not open to him, as he had not carried out a due inquiry as to the meaning and the understanding of such word by the ordinary people of Cyprus.
Therefore, the sub judice decision is declared null and void and of no effect.
There will be no order as to costs.
Sub judice decision annulled.
No order as to costs.
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