(1985) 3 CLR 207
[*207] 1985 January 21
[PIKIS, J.]
IN THE MATTER OF ARTICLE 146 OF THE CONSTITUTION
GRANADA (FURNITURE AND BEDDING
MANUFACTURERS) LTD.,
Applicants,
v.
THE REPUBLIC OF CYPRUS, THROUGH
1. THE OFFICIAL RECEIVER AND REGISTRAR,
REGISTRAR OF TRADE MARKS,
2. THE ASSISTANT OFFICIAL RECEIVER AND
REGISTRAR, REGISTRAR OF TRADE MARKS,
Respondents.
(Case No. 435/82).
Trade marks—Register of trade marks—Rectification—“Person aggrieved” in section 33 of the Trade Marks Law, Cap. 268—Meaning—Abandonment of trade mark— Whether a trade mark is likely to cause confusion—Test applicable—Discretion of Registrar of Trade Marks— Principles on which Court interferes with such discretion—“Silentnight" used by interested parties as a description of their products since 1956—Use of the same mark by applicants, likely to cause confusion— Section 13 of the above Law.
The interested parties were manufacturers and traders of furniture and bedding. They traded in the United Kingdom and other countries under trade mark “Silentnight” first adopted in 1956, since, consistently used as their brand name. In 1969 they entered into a trade association with a Cyprus company, namely. N. N. Christofides Ltd., authorizing the latter to use “Silentnight” as description for their manufactured products, furniture and [*208] mattresses. Business co-operation between them ended in 1972; and upon an application to the Registrar of Companies the name of the company N. N. Christofides Ltd. was changed to “Granada” (Manufacturers of Furniture and Mattresses) Ltd., the present name of the applicants; they kept manufacturing, and trading in the same products, that is, furniture and bedding. On their application “Silentnight” was registered as their trade mark on 5th March, 1973. On the 5th March, 1980 the interested parties applied for the rectification of the register by the expungement of the above trade mark registered in the name of the applicants as one registered without sufficient cause. The Registrar decided that “Silentnight” had been (entered in the register without sufficient cause and as such was liable to be erased and ordered it expungement. In arriving at his decision he dismissed the suggestion that the interested parties failed to qualify as “aggrieved persons” in the sense of section 33 and upheld the submission of the interested parties that the registration of “Silentnight” in the name of the applicants was likely to cause confusion.
Upon a recourse by the applicants against the above decision the following issues arose for consideration:
(a) the legitimacy of the interest of the interested parties in the amendment of the Register, (b) the validity of allegations of abandonment of the use of “Silentnight” by the interested parties in Cyprus, and (c) the likelihood of deception or confusion arising from the use of “Silentnight” by the applicants.
Held, (1) that the expression “agrieved person” in section 33 of the Trade Marks Law, Cap. 268 has been liberally construed in a manner embracing every party with a genuine grievance pertaining to the registration of a mark; that the grievance must be substantial in the sense that it must be associated with a definable interest of the party applying for rectification; that a sentimental objection to the use of a word will not suffice; that the interested parties traded in similar products as the applicants and had used “Silentnight” as a description of their products since 1956; that, moreover, they had some [*209] association with Cyprus arising from their co-operation with N.N. Christofides Ltd., they might wish to renew at a future date; and that, therefore, on proper evaluation of the facts of the case, particularly the nature and extent of the interest of the interested parties in the use of “Silentnight”, it was, at the least, open to the Registrar, if indeed not unavoidable, to find they were aggrieved persons.
(2) That contrary to the submission of applicants no action of the interested parties could be construed as an act of abandonment of “Silentnight”.
(3) That with regard to the decision of the Registrar that the trade mark was likely to cause confusion or deception the test is whether the decision was reasonably open to the respondent and the answer depends on proper application of the provisions of section 13 of the Trade Marks Law, Cap. 268 to the facts of the case, especially whether the Registrar could properly discern a likelihood of confusion of the products of the applicants for those of the interested parties; that where the similarity is soundwise striking, the response of the Judge himself on hearing the two sounds may be sufficient for finding a likelihood of deception or confusion; that the possibility of confusion must be real and tangible; that it is a matter of fact and degree whether confusion is a likelihood; that in this case it is difficult for anyone to argue that the use of an identical description by the applicants with that used by the interested parties as a description of their products would not be apt to cause confusion as to the source of the products, especially products of the same nature; that the likelihood of members of the public confusing the products of the applicants for those of the interested parties was, as a matter of fact, real and substantial; accordingly the recourse must fail.
Application dismissed. [*210]
Cases referred to:
Curzon Tobacco v. Republic (1979) 3 C.L.R. 151;
Merck v. Republic (1972) 3 C.L.R. 548;
Ralph's T.M. [1883] 25 Ch. D. 194;
Rose v. Evans [1879] 48 L. J. Ch. 618;
Talbot’s T.M. [1894] 11 R.P.C. 77; 63 L.J. Ch. 264;
Bali Trade Mark [1969] R.P.C. 472.
Recourse against the decision of the respondents whereby the register of trade marks was rectified by the expungement of trade mark “Silentnight”.
Ph. Valiantis, for the applicants.
St. Ioannidou (Mrs.), for the respondents.
G. Platritis, for the interested party.
Cur. adv. vult.
PIKIS J. read the following judgment. The recourse is directed against a decision of the Assistant Receiver and Registrar of Trade Marks directing the rectification of the register of trade marks by the expungement of trade mark “Silentnight” at the instance of the interested parties, Silentnight Ltd., an English company. The applicants, manufacturers of furniture and bedding oppose the rectification and seek its cancellation. The Registrar, they argued, had no valid cause to amend the register by deleting the aforementioned trade mark standing registered in their name since 1973.
Undoubtedly the decision of the Registrar is on principle and authority subject to judicial review under Article 146.1, like any other executory administrative act. Provided the law and the facts are properly conceived [*211] by the Arministration, the test of legality of his action is whether the decision taken was one reasonably open to the authority. Section 33 of the Trade Marks Law confers wide discretionary powers upon the Registrar on application by an aggrieved person to rectify the register for good cause, including power to direct the expungement from the register of a trade mark registered without sufficient cause. The breadth of his powers was acknowledged by the Full Bench of the Supreme Court in Curzon Tobacco v. The Republic (1979) 3 C.L.R. 151. In the judgment of the Court it is explained by A. Loizou, J., that the Court reviewing the action of the Registrar will be disinclined to interfere if due consideration was given to material facts and the result is not fraught with misconception of either the law or the facts of the case.
It is beneficial before reviewing the decision to recite the salient aspects of the factual background of the case in order to be able to inquire into the matters before us with proper hindsight of the substratum of the case.
The interested parties are manufacturers and traders of furniture and bedding. They trade in the United Kingdom and other countries under trade mark “Silentnight” first adopted in 1956, since, consistently used as their brand name. In 1969 they entered into a trade association with a Cyprus company, namely, N. N. Christofides Ltd., authorizing the latter to use “Silentnight” as description for their manufactured products, furniture and mattresses. Not only they licensed the aforesaid Company to use “Silentnight” but became shareholders of the company and nominated three of its directors. Business cooperation between them ended in 1972. Directors nominated by the interested parties resigned, while the interested parties sold their shares to Mr. Renos Christodoulides, of Nicosia, who acquired, it seems, a substantial interest in the company. On application to the Registrar of Companies the name of the company N. N. Christofides Ltd. was changed to “Granada” (Manufacturers of Furniture and Mattresses) Ltd., the present name of the applicants; they kept manufacturing and trading in the same products, [*212] that is, furniture and bedding. On their application “Silentnight” was registered as their trade mark on 5th March, 1973.
The interested parties applied for the rectification of the register on 5th March, 1980. They sought the expungement of the trade mark registered in the name of the applicants as one registered without sufficient cause. The applicants opposed the rectification of the register maintaining it had been registered for good cause. The Registrar, after duly heeding the opposing views and taking stock of the factual background elicited in affidavits filed on behalf of the parties, decided “Silentnight” had been entered in the register without sufficient cause and as such was liable to be erased and ordered its expungement. In arriving at his decision he dismissed the suggestion that interested parties failed to qualify as “aggrieved persons” in the sense of section 33 and upheld the submission of interested parties that the registration of “Silentnight” in the name of the applicants was likely to cause confusion.
Arguing their case before me, applicants raised similar arguments to those advanced before the Registrar, notably that the interested parties were not persons aggrieved in the sense of the law or entitled to the protection of the Court. The facts, they submitted, justified the inference that applicants abandoned their rights over “Silentnight” after the cessation of their business cooperation with N. N. Christofides and the lack of any response from their part to the registration of the trade mark in the name of the applicants in 1973 despite the lapse of a long interval of time since. Emphasis was laid on the amendment of the Trade Marks Law effected by Law 63/62 repealing, inter alia, the proviso to section 11(1)(e) that provided that trade marks registered in Part ‘A’ of the United Kingdom Register of Trade Marks constituted prima facie evidence of distinctiveness of the mark. Respondents counter-argued the amendment is irrelevant to the present case as we are not concerned with the distinctiveness of “Silentnight” that was found distinctive enough to justify registration [*213] in both the U.K. and Cyprus. Certainly it did not qualify the meaning of “aggrieved person” in section 33(1) of Cap. 268 or limit its application to citizens or residents of this country. Section 33(1) does not in terms or by necessary implication limit the range of aggrieved persons to non-foreigners, while in Kerly it is acknowledged on the interpretation of comparable English legal provisions that a foreigner does, in appropriate circumstances, qualify as an aggrieved person.
Three are the main issues to be resolved: (a) the legitimacy of the interest of the interested parties in the amendment of the Register, (b) the validity of allegations of abandonment of the use of “Silentnight” by interested parties in Cyprus, and (c) the likelihood of deception or confusion arising from the use of “Silentnight” by the applicants. The Registrar focused attention on each of the above issues and decided them in favour of the interested parties. In his well considered ruling he made lengthy reference to the interest that a party must possess in order to move for the rectification of the register, a subject discussed at length in Kerly by reference to decidedcases. The expression “aggrieved person” in the context under consideration has been liberally construed in a manner embracing every party with a genuine grievance pertaining to the registration of a mark. The grievance must be substantial in the sense that it must be associated with a definable interest of the party applying for rectification; a sentimental objection to the use of a word will not suffice. A trader, it has been held, who uses a certain name as description for his goods without wishing to register it as a mark, qualifies as an aggrieved person. Nor is it necessary that the person applying for the amendment of the register should actually trade in the particular goods. It is sufficient if there is a possibility that he may wish to extend his business to those goods. [*214]
On proper evaluation of the facts of the case, particularly the nature and extent of the interest of the interested parties in the use of “Silentnight”, it was, at the least, open to the Registrar, if indeed not unavoidable, to find they were aggrieved persons. They traded in similar products as the applicants and had used “Silentnight” as a description of their products since 1956. Moreover, they had some association with Cyprus arising from their cooperation with N. N. Christofides Ltd. they might wish to renew at a future date. Contrary to the submission of applicants’ no action of the interested parties; could be construed as an act of abandonment of “Silentnight”. For much the same reasons as those given by the Registrar, I dismiss the submission that interested parties did not qualify as aggrieved persons. They had a right to apply for the rectification of the register; what remains to decide is whether: “Silentnight” was rightly expunged from the register. As earlier indicated, the test is whether the decision was reasonably open to the respondent. The answer depends on proper application of the provisions of section 13 of the Trade Marks Law to the facts of the case, especially whether the Registrar could properly discern a likelihood of confusion of the products of the applicants for those of the interested parties. In the “Bali” Trade Mark [1969] R.P.C. 472 (H.L.), it was indicated that where the similarity is soundwise striking, the response of the Judge himself on hearing the two sounds may be sufficient for finding a likelihood of deception or confusion. In the words of Lord Upjohn quoted in the decision Of the Registrar, it is sufficient for finding a likelihood of confusion “.... 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”. Later on he remarks that the possibility of confusion must be real and tangible. It is a matter of fact and degree whether confusion is a likelihood. In this case it is difficult for anyone to argue that the use of an identical description by the applicants with that used by the interested parties is a description of their products would not be apt to cause confusion as to the source of the products, especially products of the same nature. The likelihood of members of the public [*215] confusing the products of the applicants for those of the interested parties was, as a matter of fact, real and substantial.
In the result the application is dismissed. Let there be no order as to costs.
Recourse dismissed.
No order as to costs.
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