The Registrar objected to Creative Resources' application under sections 11(1)(b) and 11(1)(c) of the Trade Marks Ordinance (Cap. 559) ("Ordinance") on the basis that the word "naked" designated a characteristic of the product i.e. condoms and so was insufficiently distinctive itself to function as a trade mark.
The Registrar considered the word "naked" as conveying a direct and immediate message that the condoms would make the users feel naked or nearly as if the condoms are not even there and thus, the mark was a sign that consisted exclusively of a word which might serve to describe and designate the characteristics of the goods. The Registrar also conceived that consumers would perceive the subject mark as a description of condoms, rather than an identification of condoms belonging to any particular proprietor (i.e. Creative Resources). The mark was therefore considered to be not distinctive enough to be registered as a trade mark in Hong Kong.
Court Of First Instance's Ruling
In the appeal, Creative Resources argued that the Registrar has wrongly treated a user's feeling or sensation on using a condom as equivalent to a condom's characteristic. It sought to distinguish a term that directly describes the characteristic of a product and a term that merely indirectly suggests such characteristic.
Creative Resources also argued that the Registrar had attached too much weight to the 3 internet search hits which were generated by non-Hong Kong based entitles and too little weight on the fact that the proposed mark had been accepted in the European Community.
In its decision based on the 1st argument above, the Court of First Instance adopted the practical and non-exhaustive guidelines in the European case of P OHIM [Office for Harmonization in the Internal Market] v. WM Wrigley Jr. Company (DOUBLEMINT) to assess whether a term was descriptive or suggestive of an attribute. The considerations on a sliding scale are :-
- The way in which a term relates to the product or one of its characteristics. The more imaginative and subjective the relationship is, the more acceptable the term will be for registration;
- The way in which a term is perceived. The more ordinary, definite and down-to-earth a term is, the more readily a consumer will apprehend any designation of a characteristic and the least likely the term will qualify for registration; and
- The significance of the characteristics in relation to the product, in particular in the consumer's mind. Where the characteristic designated is essential to the product, or is of a particular importance in a consumer's choice, then the least likely the term will qualify for registration.
Based on the above, the Honourable Reyes J disagreed with the Registrar's view that the word "NAKED" was descriptive of condoms. It was decided that the term "NAKED" bears no direct objective relation to a condom and the adjective "naked" would not conventionally be used to modify the word "condom". Also, the link between "nakedness" and the characteristics of a condom is not immediately discernible and the word suggests different attributes to different persons, depending on the sensibility of their imaginations.
The Judge further held that the term is unlikely to evoke a specific bundle of attributes in the minds of consumers, but is likely to connote different things to different people. The mark "NAKED" is capable of identifying the products of a particular undertaking in the mind of a given person and is capable of bearing a distinctive character. Hence, registration of the proposed mark "NAKED" would not contravene sections 11(1)(b) and 11(1)(c) of the Ordinance.
However, it should be noted that the Registrar disagreed with the Court of First Instance and has filed an appeal against the decision.
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