(1987) 3 CLR 134
[*134]
[TRIANTAFYLLIDES P. SAVVIDES LORIS STYLIANIDES KOURRIS. JJ.]
G. A. KERANIS A. E. KAPNOVIOMICHANIA «ETHNOS» OF GREECE
Appellant-Interested Party.
v.
ALFRED DUNHILL LIMITED
CIGARETTE MANUFACTURERS OF U.K.
Applicants-Respondents.
v.
THE COMMISSIONER OF TRADE MARKS.
Respondent.
(Revisional Jurisdiction Appeal No. 497).
Trade Marks-The Trade Marks law. Cap. 268 ss11 (1)(e) 13 and 14-User abroad-Irrelevant as to registrability on ground of distinctiveness (s. 11(1)(e)), but relevant and admissible in cases of deception or confusion (s. 13 and 14).
Administrative Law-Due inquiry- Trade marks-Application for registration of- Application opposed-In reaching sub judice decision the Registrar ignored relevant and admissible evidence-Sub judice decision annulled for failure to carry out a due inquiry.
The applicants-respondents, who are the proprietors of registered trade marks in respect of cigarettes the registration being limited to red or maroon and gold colours, opposed an. application submitted by the appellant interested party for registration of the word OSCAR in respect of cigarettes. The respondent-Registrar however, accepted registration of the said word in Part B of the Register with no limitation as to colours and as a result the applicants-respondents filed a recourse to this Court. The Judge of this Court, who tried the recourse annulled the said decision of the Registrar «for wrong exercise of discretion». Hence the present appeal.
In reaching the sub judice decision the Registrar treated as irrelevant evidence to the effect that in Greece the appellant-interested party uses his trade mark in similar colours as those of the applicants-respondents on the ground that under the law and the authorities it is user in this country that is taken into consideration and not user abroad.
Held Dismissing the appeal (1) It is clear that the Registrar misconceived the issue before him. Even it the issue was confined to relevance an [*135] admissibility of evidence, evidence of user abroad is irrelevant a inadmissible only for purposes of registrability of a trade mark on the group of distinctiveness (Section 11(1) e) of Cap. 268) but not in cases of deception or confusion (sections 13 and 14 of Cap. 268).
(2) The primary duty of the Registrar was to carry out a proper and d# inquiry before reaching the sub judice decision. In this case by ignoring t# evidence aforesaid, which might be indicative of the intention of the interested arty to use the same colours in Cyprus the Registrar failed to call out a due inquiry and it is for this reason that the sub judice decision ought have been annulled.
Appeal dismissed.
No order as to cost
Cases referred to:
loannides v. The Republic (1972) 3 C.L.R. 318.
Appeal.
Appeal against the judgment of a Judge of the Supreme Court of Cyprus (L. Loizou, J.) given on the 11th April. 19### (Revisional Jurisdiction Case No.260/77) whereby the decision of the respondent to register the trade mark of the interested pa### No. B. 14955 consisting of the word Oscar and design in part of the register of Trade Marks was annulled.
L. Demetriades with I.Loizidou (Mrs). for the appellant interested party.
G. Nicolaides with T. Economou, for respondent-applicant
No appearance for the respondent.
Cur. adv. vult.
TRIANTAFYLLIDES P. The Judgment of the Court will ### delivered by Loris, J.
LORIS J: The present appeal of the interested party is direct### against the judgment of a judge of this Court in recourse No. 26### 77 whereby the decision of the Registrar of Trade Marks dated t# 18th July 1977, (to register the trade mark of the interested par### No. B14955 consisting of the word «OSCAR» and design in pa### of the register of Trade marks and dismiss the Opposition of the [*136] application against such registration) was annulled «for wrong ###ercise of his discretion».
The salient facts are briefly as follows:
The applicants are the proprietors of trade marks under Nos. 0286 and 14557 registered in Cyprus in 1967 and 1972 respectively, in respect of cigarettes the registration being limited ###red or maroon and gold colours.
On the 4th May, 1973, the interested party applied for registration of the trade mark «OSCAR» in respect to cigarettes, which was accepted by the Registrar for registration in Part B of the register under No. B. 14955, with no limitation as to colour.
The trade mark was then advertised in the official Gazette of the ###public, hereupon the applicants filed an opposition against its registration on the grounds that the proposed trade mark so ###sely resembled their own that it was likely to cause confusion or ###ception and further that the interested party should enter a condition not to use the proposed mark in the colours used by applicants.
The interested party filed a counter-opposition stating that their ###de mark has no resemblance to that of the applicants and is ###stinguishable from it and that there is no likelihood of confusion used in the same colours as that of the applicants.
After the filing of the opposition and the counter-opposition as ###resaid a hearing took place before the respondent Registrar ###o gave his decision On the 18th July 1977, dismissing the trade #position of the applicant and directing that the sub-judice trade ###ark do proceed for registration in Part B of the Register as ###vertised.
The relevant part of the decision of the Registrar is at pp 7 and and his decision and reads as follows:
«The applicants, put forward evidence to prove that the applicants trade mark is used in Greece in similar colours as those the applicants. Under the Law and the authorities it is user in this #untry that is taken into consideration and not user abroad. This #lear from Kerly 10th edition page 146, para 8-67.
### quote: [*137]
‘On an application to register a mark for use in the Unite Kingdom, it is distinctiveness in the United Kingdom that is I question.’
Therefore evidence of use abroad is irrelevant and I did not take it into consideration. In Cyprus applicant’s trade mark is not use### and this is clear from the evidence even of the opponents.»
It is clear from the above extract of the sub-judice decision of the Registrar that the latter misconceived the issue before him; even ### the issue was confined to relevance and admissibility of evidence evidence of user abroad is irrelevant and inadmissible only fo### purposes of registrability of a trade mark on the ground o### distinctiveness under s. 11(e) of Cap. 268. But this does not exten### to cases of deception or confusion (ss 13 and 14 of Cap. 268). A### stated in Kerly’s 10th ed. at p.61 (para. 4-31) «evidence o### deception and confusion abroad may be relevant in opposition proceedings before the Registrar, particularly if the logical inference from such evidence is that there would be ### corresponding likelihood of deception or confusion in the United Kingdom.»
In fact the primary duty of the Respondent Registrar, as a### Administrative Organ, was to carry out a due and proper inquiry### before reaching at the sub-judice decision; and it is crystal clear from the aforesaid extract of his decision that-he failed to carry out such an Inquiry by ignoring altogether the evidence tendered by the applicant at the hearing that the interested party was selling in Greece its ‘OSCAR’ cigarettes in packets of the same colours as those of the applicants, which might be indicative of their intention to use the same colours in Cyprus; a factor which might be found to be relevant to the issue of the probability of causing deception or confusion. It is well settled in administrative Law that failure to make a due enquiry is a ground for annulment; «it is an idependent sufficient by itself, ground of annulment» (loannides v. The Republic (1972) S CLR 318 at p.326).
The sub judice decision therefore ought to have been annulled on the ground of failure of the respondent to carry out a due Inquiry, which he should now proceed to conduct.
In the result the appeal is dismissed with no order as to its costs. [*138] Before concluding we must observe, for purposes of guidance ###the future, that learned counsel for the Republic who appeared ### the litigation at the first instance level for the Respondent Registrar, did not. Appear before us on appeal but he informed the Court in writing that he agreed with, the judgment of the trial judge. We are of the view that the Court would have been assisted considerably if he had appeared also before us in order to explain ###iva voce the stand of the respondent in this appeal and we expect his course to be followed in future.
Appeal dismissed with
no order as to costs.
cylaw.org: Από το ΚΙΝOΠ/CyLii για τον Παγκύπριο Δικηγορικό Σύλλογο