MISS COOL to be registered despite earlier provisional refusal

Despite an earlier provisional refusal, the Cypriot registrar of trademarks has accepted the international application for the registration of the mark MISS COOL (Registration 795 353, October 3 2007).

On August 22 2002 Ducoma AG applied for the international registration of the trademark MISS COOL with the World Intellectual Property Organization for goods in Classes 3, 14, 25, 28, 30, 32, 33 and 34 of the Nice Classification. On August 1 2006 the registrar filed a provisional refusal against the application on the grounds that the mark applied for was similar to the earlier trademark COOL in Class 14 (Section 14(1)(a) of the Trademarks Law). The refusal was also based on Sections 11(1)(b) and (c) of the law, which refer to trademarks that:

• lack distinctive character (Section 11(1)(b)); and
  
  
• consist exclusively of signs or indications which may be utilized in trade to indicate the kind, quality, destination, value, geographical origin or time of production of the goods or the rendering of the service, or other characteristics of the goods or services (Sections 11(1)(c)).

Under the Trademarks Law, a trademark application may be refused if:

• the mark applied for is identical or similar to an earlier trademark; and
  
  
• the goods or services covered by the application are identical or similar to those used in relation to the earlier mark.

The test to establish similarity is that the mark may mislead or cause confusion. During a full hearing, the registrar examined the following issues:

• whether the goods covered by both marks are identical or similar; and
  
  
• if so, whether there is a likelihood of deception or confusion.

The registrar concluded that the owner of the earlier trademark COOL is involved only in the sale and distribution of watches and chronological instruments for the general public, while MISS COOL covers a variety of goods. Although one of the classes covered by MISS COOL includes watches and chronological instruments, these target only young female customers. Therefore, the goods covered by the two trademarks target different groups of consumers.

With regard to Sections 11(1)(b) and (c), Ducoma argued that MISS COOL has acquired distinctive character through use and reputation, as it is already registered in over 50 countries, including the United States.

Having taken these arguments into consideration, the registrar allowed registration of the mark MISS COOL.

Phivi Tramountanelli, Michael Kyprianou & Co, Nicosia