Registration of trademarks – possibility of new trial

On 30 July 2018, the Court of Appeal (Inferior Jurisdiction) presided over by Mr Justice Anthony Ellul in the case Dr Luigi A. Sansone as a special mandatory of the foreign company Novartis AG vs. the Comptroller of Industrial Property (Court Application Number 4/2014/1) considered the possibility of a new trial in the context of an application for the registration of a trademark. The Court analysed under which circumstances an error resulting from the proceedings or documents of the cause may trigger a new trial of a previously decided cause.

The facts in this case were as follows:

An application for the registration of a trademark in the register of trademarks to be called “Precision Curve” for contact lenses, was refused by the Comptroller of Industrial Property (the “Respondent”). The proposed trademark was refused on the grounds that it was deemed descriptive and intended to designate the kind, quality and intended purpose of the goods and was not considered to have a distinctive character. Notwithstanding a request for reconsideration by Novartis AG, a company organised under the laws of Switzerland (the “Appellant”), the Respondent’s decision remained unaltered. The Appellant filed an appeal against this decision in the Court of Appeal claiming, amongst other things, that “Precision Curve” classifies within the definition of a trademark since it is a graphic representation of the product which is objectively capable of distinguishing the product at hand from others. Moreover, the word-combination was successfully registered as a trademark for contact lenses in foreign jurisdictions. The Respondent rebutted all claims by arguing that the refusal was in line with the Trademarks Act, Chapter 416 of the Laws of Malta. The Respondent insisted that the proposed trademark is descriptive and since the specific words “precision” and “curve” are commonly used in the marketing of contact lenses, if the proposed trademark was registered, this would prohibit any company other than the Appellant from using these terms. The Court of Appeal ruled in favour of the Respondent on 30 June 2017 (the “First Judgement”).

The First Judgement led the Appellant to file an application for a new trial in the same Court of Appeal, requesting the Court to set aside the First Judgement and to order a new trial of the cause in accordance with the Code of Organisation and Civil Procedure, Chapter 12 of the Laws of Malta (the “Request for a New Trial”). The Appellant maintained that the First Judgement was the effect of an error resulting from the proceedings. The Court in the First Judgement substantiated its arguments and analysis by making reference to a judgement of the Court of Justice of the European Union (“CJEU”) (Case number C383/99P) in the names of Procter & Gamble Company vs. Office for Harmonisation in the Internal Market (Trade Marks and Design) (the “EU Judgement”). The Appellant alleged that the Court of Appeal in the First Judgement consulted an incorrect version of the EU Judgement which referred to the trademark “Baby-Drive”, when the trademark at the centre of the dispute was in fact “BabyDry”. The Appellant affirmed that this constituted a factual error which influenced the Court’s decision and led it to conclude that the proposed trademark “Precision Curve” could not be considered a lexical invention which bestows distinctive power on the trademark. In the Request for a New Trial, the Appellant observed that two versions of the EU Judgement may be found on the internet, yet the Court of Appeal in the First Judgement relied on an incorrect version issued on the website of the CJEU. The official version of the EU Judgement is issued on the website of the European Union Intellectual Property Office (“EUIOP”). At the time of writing, the incorrect version of the EU Judgement was still published on the website of the CJEU. The Appellant claimed that by relying on the incorrect EU Judgement, the Court of Appeal mistakenly examined “Precision Curve” in comparison with “Baby-Drive” which led it to reach an improper conclusion in the First Judgement.

In examining the facts of the Request for a New Trial, the Court of Appeal delved into the aspect of new trial under Maltese law. This is an extraordinary procedure which should be applied in a restrictive manner. The Request for a New Trial was submitted on the basis of article 811(l) of the Code of Organisation and Civil Procedure which states that “a new trial of a cause decided by a judgement … may be demanded by any of the parties concerned, such judgement being first set aside, … where the judgement was the effect of an error resulting from the proceedings or documents of the cause”. The Court of Appeal explained that for a new trial to be granted on the basis of the above provision, the following elements must all be present: (a) the error must be a material error of fact and not a mistake on interpretation; (b) the error must result from the proceedings or documents of the cause; (c) the error must be a manifest error which becomes evident from a comparison between the judgement and the proceedings or documents of the cause, in such a way that it reveals a simple inadvertence of the judge; (d) the error must have determined the judge’s decision and must have been a primary underlying factor of the judgement; and (e) the existence or otherwise of the erroneous fact must not have been subject of controversy or discussion between the parties and a point on which judgement was pronounced.

In such a case of an application for a new trial, the procedure is two-fold: the Court must first assess whether the error exists, and secondly whether the above five elements are cumulatively satisfied.

The Court of Appeal in the Request for a New Trial considered that the two versions of the EU Judgement are identical other than the incorrect reference to “Baby-Drive” instead of “BabyDry”. The Court of Appeal confirmed that the First Judgement included an error of fact, although for such error to fall within the parameters of Maltese law, it must be in relation to the facts which were decided upon and not to an error in a judgement which the Court examined. The presiding Court observed that the principles of the EU Judgement relied on by the Court in the First Judgement were independent of the trademark name under consideration in the EU Judgement. The Court of Appeal’s decision was not affected by reference to the name “Baby-Dry” or “BabyDrive”. The Court rejected the application for registration of the trademark since it felt that the proposed trademark described the quality and characteristics of the product and was devoid of any distinctive character.

The Court of Appeal in the Request for a New Trial concluded that the error of the First Judgement concerning the reference to “Baby-Drive” instead of “BabyDry” in the incorrect EU Judgement had no consequential effect on the First Judgement. Notwithstanding the error, the proposition quoted by the Court of Appeal was identical in both versions of the EU Judgement and was applied to the First Judgement in light of numerous more recent judgements and guidance notes issued by the EUIOP. The Court’s decision was that the trademark “Precision Curve” could not be considered a lexical invention which provided a distinctive characteristic to the trademark. In this conclusion, there was no error of fact.

Dr Emma Cassar Torreggiani is a Trainee Advocate at GANADO Advocates.