AIRKRAFT to be registered despite earlier provisional refusal

Despite an earlier provisional refusal, the registrar of trademarks has allowed the registration of the trademark AIRKRAFT for air springs (March 16 2009).
In 2001 AJR Suspansiyon Sistemleri Sanayi Ve Ticaret Anonim Sirketi applied for the international registration of the trademark AIRKRAFT with the World Intellectual Property Organization (Application 772676) for goods in Classes 12, 17 and 27 of the Nice Classification, including air springs for vehicles.
In 2008 the registrar of trademarks of Cyprus filed a provisional refusal of protection of the mark for goods in Class 12. The provisional refusal was based on absolute grounds under Sections 11(1)(b) and (f) of the Trademarks Law (Cap 268). Under the law, a trademark shall not be registered if:
  • it lacks distinctive character; or
  • it may deceive the public as to the nature, quality or geographical origin of the goods or services.
The AIRKRAFT mark is already registered in over 50 countries (eg, Austria, Finland, France, Germany, Greece, Italy, Poland and the United States) and is pending registration in several other countries. AJR Suspansiyon submitted invoices to demonstrate the high level of sales in Germany. It also argued that the mark had acquired distinctiveness through use in numerous countries.
AJR Suspansiyon further argued that consumers would not be deceived or confused, as the goods at issue may be sold only by specialized companies and target only a small group of consumers.
The registrar nevertheless requested that AJR Suspansiyon remove the Class 12 goods from the application, warning that it would not allow the registration of the mark for these products. AJR Suspansiyon refused and a second hearing took place. 
During the second hearing, AJR Suspansiyon argued that many words that may bring certain goods to mind have been registered for other products. For example, the DIESEL mark is registered for clothing and the VANS mark for shoes. AJR Suspansiyon also argued that the public would not be deceived or confused as to the nature of the goods, as the elements 'air' and 'kraft' meant 'air power'.
Under Champagne Moët & Chandon v Registrar of Trademarks (Case 617/92, October 22 1993), a mark will be held to be distinctive if it has been invented especially for the purpose of distinguishing the goods of one company from those of others. In the present case, AJR Suspansiyon submitted that 'airkraft' was an invented word which alluded to the fact that the goods at issue use the power of air in order to function. AJR Suspansiyon also argued that there was no likelihood of confusion between the term 'aircraft' and the AIRKRAFT mark, as many words in the English language sound the same, but are written differently and have different meanings.
After examining this second set of arguments, the registrar decided to allow the registration of the mark. 
Phivi Tramountanelli, Michael Kyprianou & Co, Nicosia

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