REPLY

This is in response to the Registrability Report issued by the Trademark Examiner last
August 05, 2014 concerning our application for the trademark CUTICOLORS AND
DEVICE.
The examiner therein found that the trademark which applicants seek to register for nail
polish under Class 3 of the Nice Classification is confusingly similar with the trademark CUTIE
CURL for mascara owned by ZA Cosmetics.
Pursuant to Section 133.3 of the Intellectual Property Code granting the applicants a
period of four (4) months to reply or amend the application, the applicants maintain in this
REPLY that:
1. The application met the filing requirements of Section 127 of the Intellectual Property Code,
and that such was not disputed by the Examiner;
2. The application met the requirements provided under Section 124.1 of the Intellectual Property
Code, and that such was not disputed by the Examiner;
3. Contrary to the findings of the Examiner that the application must be denied on the ground that
it failed to comply with Section 123(d) of the Intellectual Property Code, because it is identical
with a registered mark belonging to a different proprietor, applicants are of the view that the
application must be given due course as the applicants believe that CUTICOLORS is not
confusingly similar with CUTIE CURL. This is on account of the following considerations:
a.

While both CUTICOLORS and CUTIE CURL belong to the same category under

Class 3 of the Nice Classification (cosmetic products), we believe that confusion is not likely to
occur in view of the nature of the products involved. The products involved are cosmetic
products, which are usually purchased by women who are discerning as to their choice in
purchasing the same. This is further illustrated by the fact that cosmetic products are usually sold
in department stores, malls and similar establishments with the assistance of sales ladies who
answer the queries of purchasers as to the said cosmetic products.
b.

A casual purchaser of make-up, nail polish, mascara and other cosmetic products

is predisposed to be more selective, cautious, discriminating in and would prefer to mull over her
purchase. Unlike in her purchase of ordinary household items such as vinegar, soy sauce, or
soap, she would usually employ the same prudence and judgment in buying jeans and other

articles of clothing. The ordinary purchaser knows the difference between mascara, used for
one's eyelashes and a nail polish, used for one's nails. More credit should be given to the ordinary
purchaser, who is not the completely unwary consumer, but is the ordinarily intelligent buyer
considering the type of product involved.
c.

In determining similarity and likelihood of confusion, two tests had been

developed: the holistic test and dominancy test. The dominancy test sets sight on the similarity
of the prevalent features of the competing trademarks that might cause confusion and deception.
Under this norm, the question at issue turns on whether the use of the marks involved would be
likely to cause confusion or mistake in the mind of the public or deceive purchasers. One of the
prevalent features of the trademark CUTIECOLORS is the logo consisting of two hands with
nails painted with various colors, while that of CUTIE CURL is only its tradename, without any
accompanying illustration. In the application, applicants also claimed certain colors (red, orange,
yellow, blue, violet, green, pink, yellow green, yellow orange, red orange, and blue green) as
distinctive features of the mark, while no such colors were used in the trademark being compared
with that of applicants' trademark. The two trademarks put side by side, it would be easy for the
consumer even without careful scrutiny to discern that the two trademarks pertain to different
products and different origins.
d.

CUTICOLORS consists of only one word and four syllables, while CUTIE CURL

consist of two words and three syllables. The origin and inspiration of the two trademarks are
also easily discernible. CUTI in CUTICOLORS obviously refer to cuticles as the trademark
is sought to be employed in nail polishes. CUTIE in CUTIE CURLS, on the other hand,
originated from CUTE. The word COLORS in CUTICOLORS also indicate that the product
involved many colors, which is the main selling point of a nail polish, unlike in a mascara where
color is not really a feature of the product.
THEREFORE, applicants maintain that CUTICOLORS is not confusingly similar to
CUTIE CURL. Hence, the application must be given due course for its registration.