The trademarks registrar has accepted an application to register the trademark MISS COOL in Cyprus.
On 22nd August 2002 Ducoma AG filed an international trademark application for MISS COOL with the World Intellectual Property Organisation. On 1st August 2006 the Cypriot Trademarks Registrar filed a provisional refusal against the trademark application.
The refusal was based on the corresponding provisions of the Trademarks Law (Cap 268), namely:
- Sections 11(1)(b) and (c), which deal, respectively, with:
- Trademarks that lack distinctive character.
- Trademarks that consist exclusively of signs or indications that may be utilized in trade to indicate the kind, quality, destination, value, geographic origin or time of production of the goods or the rendering of the service or other characteristics of the goods or service.
- Section 14(1)(a), on the grounds that the applied-for mark was similar to the previously registered trademark COOL in Class 14 of the Nice Classification.
Under the Trademarks Law, a trademark application may be refused if the proposed trademark is identical or similar to an earlier trademark for the same or similar goods or services. The test to establish similarity is that the mark may mislead or cause confusion to consumers in general. Therefore, during the application hearing two main issues were considered:
- Whether the protected goods were the same or of similar description.
- If the answer to the first question was affirmative then, considering proper use, whether the applied-for mark would create deception or confusion.
A search showed that the proprietor of the earlier trademark COOL dealt only with the sale and distribution of watches and chronological instruments which were addressed to the general public (ie, men, women and children of all ages). In contrast, although the MISS COOL mark covered a variety of services, one of which was watches and chronological instruments, the products were directed at young girls. Therefore, the two trademarks targeted different groups of consumers.
Regarding the refusal based on Sections 11(1)(b) and (c), it was argued that the proposed trademark should be registered since it had a distinctive character gained by use and reputation in more than 50 countries, including the United States, and was already registered in those countries. If the registration were rejected, the applicant would face huge losses.
On these grounds, the trademarks registrar accepted the application to register MISS COOL in Cyprus.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com