Most Read Contributor in Hong Kong, September 2016
Originally published 16 November 2010
Keywords: trade mark registration, Geox, Hong
Kong Registrar of Trade Marks
Geox's application for trade mark registration of a design
of a shoe with a cloud of air spurting out from the sole (see
figure 1) has been refused in a hearing before the Hong
Kong Registrar of Trade Marks on the ground of lack of
A shoe with a cloud of air spurting out from the sole appears to
be a fanciful mark in the eyes of most, but for the purpose of
trade mark registration, it cannot pass through the Registrar's
(high) standard of distinctiveness required. The Registrar views
that when this mark is used on footwear, it merely shows that air
can pass through the sole and hence it designates the
characteristics of the goods.
Geox has tried to argue that whilst the shoe alone is a simple
depiction of the goods, the additional features of the mark are
creative and would add a distinctive component to it. Further, Geox
suggests that the first impression people had of the subject mark
would be that of an iron with steam emanating from it and consumers
would not immediately think that the mark directly sends a message
that the shoe can breathe. In response, the Registrar concluded
that the mark as a whole merely tells consumers that air can go
through the sole easily so the shoe allows high permeability of
This case illustrates that any evidence of use to support a
claim that a particular mark has acquired a distinctive character
must be use of the mark as it is exactly applied for at the first
time of registration. Geox has relied on different versions of
breathing shoe designs in the evidence seeking to register any
representation of a shoe, and not a particular shoe, with steam
emanating from its sole. The Registrar is not convinced that the
different versions of breathing shoe designs constitute
satisfactory evidence of use of the applied-for mark for the
reasons that the differences among the signs as used are of such a
great extent that they cannot be regarded as forming a series to
back up pre-application use of the applied-for mark.
Over the years, we have represented brand owners to successfully
persuaded the Registry to accept registration of design marks with
arguably descriptive connotations, for example the Travelodge logo
(see figure 2) featuring a sleeping person for temporary
accommodation services. From our experience, the Registry adopts a
more stringent and conservative approach in handling a mark that
features the actual shape of the goods in respect of which the mark
is intended to be used. Such kind of design marks often need to
incorporate a distinctive word mark in order to proceed to
Copyright 2010. JSM, Mayer Brown International LLP
and/or Mayer Brown LLP. All rights reserved. Mayer Brown is a
global legal services organization comprising legal practices that
are separate entities ("Mayer Brown Practices"). The
Mayer Brown Practices are: JSM, a Hong Kong partnership, and its
associated entities in Asia; Mayer Brown International LLP, a
limited liability partnership incorporated in England and Wales;
and Mayer Brown LLP, a limited liability partnership established in
the United States. The Mayer Brown Practices are known as Mayer
Brown JSM in Asia.
This article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
intended to provide legal advice. Readers should seek specific
legal advice before taking any action with respect to the matters
discussed herein. Please also read the JSM legal publications Disclaimer.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As reported in the market updates section of this newsletter, the UAE Ministry of Economy recently reviewed the fees charged by its various departments, including the Trade Mark, Patent and Copyright Office.
As the technology industry is highly competitive and grows rapidly, organizations focus on reducing costs in a bid to strive to retain and/or gain the competitive advantage.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).