On 11th December 2001 AJR Suspansiyon Sistemleri Sanayi Ve Ticaret Anonim Sirketi filed an international trademark application with the World Intellectual Property Organisation for the mark AIRKRAFT in Classes 12, 17 and 27 of the Nice Classification.
On 17th June 2008 the Cyprus trademarks registrar filed a provisional refusal of protection in Cyprus for the international registration of AIRKRAFT in Class 12. The provisional refusal was based on an ex-officio examination and on absolute grounds for refusal.
The refusal was grounded in the corresponding essential provisions of Sections 11(1)(b) and (f) of the Trademarks Law (Cap 268). Section 11(1)(b) refers to trademarks that lack distinctive character, while Section 11(1)(f) refers to trademarks which might deceive the public as to their nature or quality or the geographical origin of the goods or services.
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.
According to Section 11(1)(b), an application to register a trademark will be refused where the trademark lacks distinctive character.
The trademark at issue had already been registered in numerous countries (eg, Austria, Germany, Finland, France, Greece, Italy, Poland), while a large number of applications for registration are still pending.
In addition, the mark had been used by the public for the past eight years, thus proving that the applicant’s trademark has gained distinctiveness.
Regarding the refusal on the basis of Sections 11(1)(b) and (c), it was argued that the proposed trademark should be registered as it had a distinct character following the reputation it had gained through use and registration in more than 50 countries worldwide.
It was also argued that the public would not be misled by the trademarked product since the specific product was of interest to only a limited group of customers and could be obtained only from specialized companies. Anyone interested in purchasing the product would contact a specific shop or distributor, resulting in no risk of confusion.
The registrar advised the applicant that the Class 12 registration application would be rejected and should be withdrawn. However, the applicant declined and a second hearing took place.
One example given by the applicant was based on the fact that many trademarks registered in Cyprus sound as if they represent one thing, but actually represent something else (eg, AIRKRAFT). Examples of well-known trademarks that are already registered in Cyprus and fall into this category include:
- DIESEL, registered for clothing (Class 25).
- QUIKSILVER, registered for clothing (Class 25).
- VANS, registered for shoes and clothing.
Section 11(1)(f) deals with trademarks which might deceive the public in regard to their nature, quality or geographical origin. In this case the applicant attempted to prove that there was no risk of confusing or misleading the public since the name of mark, AIRKRAFT, was a compound word ("air" and "kraft") meaning air power and was being used for air springs for vehicles.
Champagne Moet & Chandon v Registrar of Trademarks (22nd October 1993, Case 617/92) held that a word or term satisfies the criteria of distinctiveness only if it is invented especially to be a distinctive symbol. The word or term must be not only distinct from known words or a combination of words, but also separate from any relation to every known word.
In the case at hand AIRKRAFT was an invented word, referring to the fact that the product used the power of the air in order to function. There was no risk of confusion or of misleading the public, since many English words sound the same but are written differently and have a completely different meaning (eg, "bread" and "bred"; "pane" and "pain").
Following the second hearing and considering the arguments, on 16th March 2009 the registrar approved registration of the trademark AIRKRAFT.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com