JURISDICTION REPORT: HONG KONG
REGISTRABILITY OF A MARK IN HONG KONG
Kenny Leung Wenping & Co
Te provisions under Section 11(1)(b) and (c) of the Trade Marks Ordinance (TMO) are the two common grounds for absolute refusal of registration of a trademark in Hong Kong. Section 11(1)(b) of the TMO precludes from registration trademarks that are devoid of any distinctive character, whereas Section 11(1)(c) precludes from registration trademarks that consist exclusively of signs that are descriptive of the goods or services in respect of which registration is sought, or some characteristics of them.
Two cases have been decided recently on the issue of trademark registrability under these two absolute grounds for refusal. Te first one concerns the mark ‘reverse’ in respect of backpacks, sports bags and handbags in Class 18.
In her statement of reasons for the decision, dated February 29, 2012, Janette Sham, the hearing officer, did not accord with the submissions made by the representative of the applicant that :
• The word ‘reverse’ as appearing in the applied for mark is presented in a unique font type with the letter ‘s’ being drawn as a two-way arrow;
• The word ‘reverse’ is not commonly used to describe the applied-for goods by referring to the materials, styles and specific functions of the goods, particularly since the majority of consumers in Hong Kong speak Cantonese as their first language; and
• There is a prior registered mark on the register.
Sham took the view that the mark itself is presented in a simple manner and the word ‘reverse’ can be clearly identified; the two-way arrow device simply accentuates the meaning of the word. Further, the word reverse can be used to describe backpacks that are reversible. Consumers in Hong Kong should have little difficulty in recognising and understanding the meaning of the word, even though most of them speak Cantonese.
While it is true that the same word mark ‘Reverse’ has been allowed for registration in respect of golf clubs, golf balls and golf bags in Class 28, it is a well established principle that each case has to be assessed on its own merits and comparison with other marks on the register is, in principle, irrelevant when considering the registrability of a particular mark.
Te second case concerns the mark ‘Protect-a-Bed’ in respect of mattress protectors in the nature of mattress covers; pillow protectors in the nature of pillow cases; and quilt protectors in the nature of quilt covers in Class 24.
In his statement of reasons for the decision, dated March 8, 2012, Albert Juan, the hearing officer, did not accept the arguments being put forward by the representative of the applicant that:
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• The mark is, at most, suggestive and not directly descriptive of the applied-for goods;
• The registrar may have read too much detail into each of the elements of the mark;
• The mark itself is not a usual description that is adopted by the relevant consumers in Hong Kong in respect of the applied-for goods; and
• The mark was accepted for registration in Canada, Taiwan and the US.
Juan said that the mark is objectionable if at least one of its possible meanings designates a characteristic of the applied-for goods. Each of the words within the mark is an ordinary English word with obvious meaning and, as a whole, the literal meaning of the phrase forming the mark is immediate and clear. Tis finding is naturally arrived at when looking from the perspective of a relevant consumer aſter considering the three words together.
According to the Internet references provided to the applicant at the examination stage, the words ‘protect a bed’ are apt to be used by other traders to denote that the same applied-for goods are of a type for, and designed to accomplish the purpose of, protecting beds. Tis could reinforce and support the finding that the mark is descriptive of the characteristics of the applied-for goods.
So far as the foreign registrations of the mark are concerned, they are territorially limited and thus have no bearing on whether the mark itself is eligible for registration in Hong Kong.
Kenny Leung is an in-house counsel at Wenping & Co. He can be contacted at:
kenny@wenping.com.hk
World Intellectual Property Review May/June 2012 61
“IT IS A WELL ESTABLISHED PRINCIPLE THAT COMPARISON WITH OTHER MARKS ON THE REGISTER IS, IN PRINCIPLE, IRRELEVANT WHEN CONSIDERING THE REGISTRABILITY OF A PARTICULAR MARK.”
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