Owners of trademark emerge triumphant in cancellation proceedings
On May 18, 2023 the Cyprus Registrar of Intellectual Property delivered a reasoned decision on an application for the cancellation of the "TRIKKIS AUTOGLASS" trademark and device.
Elias Neocleous & Co LLC represented the registered owners of the "TRIKKIS AUTOGLASS" trademark.
The application for a declaration of invalidity was based on an earlier European Union trademark "AUTOGLASS SPECIALS" and design No. 007246002 covering goods and services in Classes 12, 21 and 37. Class 12 covers the following goods: windscreens, windshields, windows, sunroofs and mirrors in their entirety for vehicles.
The case
The applicants, to whom the trademark "AUTOGLASS SPECIALS" belongs, stated that the "TRIKKIS AUTOGLASS" trademark is similar to their own and thus likely to mislead, deceive and confuse the consuming public. Moreover, the applicants argued that the "TRIKKIS AUTOGLASS" trademark was registered for the sole purpose of benefiting from the reputation of the applicants' trademark in the marketplace, and that it did not have any bona fide use in the Cypriot market. The applicants also claimed that their earlier trademark is renowned worldwide and belongs to them.
The owners of the "TRIKKIS AUTOGLASS" trademark filed an opposition on December 28, 2018. In it, they argued that their trademark is entirely different to that of the applicants', both visually and aurally, thus eliminating the possibility of confusion and/or likelihood of association with the applicants' trademark. Further, the owners argued their right to use their own trade name and trademark for their business, by reasonably and fairly claiming the use of their trademark since February 22, 2008, and their trade name since 1990.
Visual differences
The registrar proceeded to make a comparison between the two trademarks visually, acoustically and conceptually. The registrar noted that the owners' trademark consists of two words, namely TRIKKIS and AUTOGLASS. The term AUTOGLASS is featured in a dark red colour below the word TRIKKIS. In contrast, the applicants' trademark bears the word AUTOGLASS in a light red color, under which appear a row of seven different vehicles. Below the vehicles is the word SPECIALS in smaller black characters.
The registrar ascertained that the dominant elements of the owners' trademark are the design and the word TRIKKIS, with the word AUTOGLASS enclosed within the design space. Further, it determined that the word AUTOGLASS cannot be the distinctive element of the trademark, being the word has a descriptive quality, identifies the product, and is also widely used in the field of car glass. Additionally, it pointed out that the average Cypriot consumer has basic knowledge of the English language and will perceive the word AUTOGLASS as a descriptive term. Therefore, the distinctive element in the owners' trademark is its design and the word TRIKKIS which is inseparably linked to the owners' company name.
Further, although the word AUTOGLASS is featured in both trademarks, the font characters and shades of colour used are nevertheless different. The word AUTOGLASS is also weakly distinctive because of its descriptive quality. As a result, the overall visual similarity was deemed low.
Acoustic variations
The registrar, after having compared the trademarks from an acoustical perspective, concluded that despite both marks sharing the common term AUTOGLASS, they nevertheless contain other terms (TRIKKIS) and (SPECIALS). The acoustical similarity of the trademarks was therefore found to be minor.
Conceptual distinction
The registrar ascertained that the owners' trademark consists of the words TRIKKIS and AUTOGLASS and the applicants' trademark consists of the words AUTOGLASS and SPECIALS. While both trademarks share the word AUTOGLASS, they were considered to have minimal conceptual similarity.
Overall assessment of the risk of confusion/similarity of products
Based on the minor visual, acoustical and conceptual likeness between the trademarks, the registrar concluded that they are not similar to the extent that there is a likelihood of confusion. In relation to the similarity of the goods, the registrar ascertained that the goods to be compared are similar.
Reputation
The registrar determined that the applicants failed to produce sufficient evidence to prove the significance of their trademark's reputation, particularly in Cyprus. Further, the registrar held that the applicants' evidence submitted did not demonstrate a risk of unfair advantage in respect of the distinctive character or repute of their trademark, nor that there is a risk that the distinctive character or repute will be damaged by the owners' use of the "TRIKKIS AUTOGLASS" trademark without due cause. Therefore, using reputation as grounds for requesting cancellation of the owners' trademark was rejected.
Article 6 bis of the Paris Convention
The applicants argued that their trademark is well known internationally and invoked Article 6 bis of the Paris Convention. The registrar pointed out that the evidence presented by the applicants neither demonstrated that their trademark is well known in Cyprus, nor that they have sufficient presence or activity in Cyprus.
In accordance with the registrar's decision, the said provision requires proof of identical or similar marks and a likelihood of confusion. Since it was demonstrated that there is no such likelihood, Article 6 bis of the Paris Convention was rendered inapplicable.
Bad faith
Finally, the applicants also alleged bad faith use by the owners of the "TRIKKIS AUTOGLASS" with respect to the applicants' earlier trademark. The registrar examined the file but did not establish or identify any bad faith use on the part of the owners with respect to the applicant's trademark. The registrar ascertained that the registration of the trademark was consistent with the commercial rationale for such an act and done as part of the owners' business strategy. As such, the registrar rejected as unfounded the grounds for cancellation based on bad faith use of the trademark "TRIKKIS AUTOGLASS".
In conclusion, the registrar held that the application for the cancellation of the owners' trademark No. 72134 be rejected. The owners of "TRIKKIS AUTOGLASS" thus retain the right to own and use their trademark, and the trademark remains in the register.
Originally Published by Cyprus Mail
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