Hong Kong: Are Slogans Registrable?

Last Updated: 26 October 2005

Originally published April 4, 2005

Trademarks Ordinance

The Trademarks Ordinance took effect on April 4 2003 with the aim of lowering the threshold for acceptable trademarks and simplifying the registration process. To date, the five decisions handed down by the Trademarks Registry concerning the ordinance have dealt with registrability of slogans.

In all five cases the slogans were rejected under Section 11(1)(b) of the ordinance. As such, none was found to possess a sufficiently distinctive character to identify goods or services as originating from specific undertakings.

UK distinctiveness test

In all decisions the registrar affirmed that the same test of distinctiveness applies to slogans and other types of mark. The test of distinctiveness is laid down in British Sugar plc v James Robertson & Sons Ltd [1996] PRC 281 and elaborated in Nestle SA's Trademark Application (Have a Break) [2004] FSR 2. Pursuant to British Sugar the question is whether a mark can be regarded as distinguishing, without first telling the public that it is a trademark. Have a Break adds that the distinctiveness must identify a product as originating from a particular undertaking. Reference to the goods for which registration is sought and the expectations of reasonably well-informed and circumspect consumers are factors to be considered.

The above reasoning echoes the guideline provided in the chapter on slogans and common phrases in the Trademarks Registry Work Manual to the effect that slogans are not in themselves objectionable as trademarks. The difficulty is the ability of a slogan to serve as a badge of origin because it often consists of indistinctive, descriptive or generic matter.

Types of Slogan

Wording

The mark YOUR WORLD IS MY WORLD (Application 200006379, September 10 2004) was applied for in relation to insurance and financial services. Originally, it was filed under the old law, but was then called for examination under the new ordinance. The registrar regarded it to be a slogan comprising ordinary words constituting a promotional statement that expressed empathy or connection with people. An average consumer, he held, would perceive the slogan as appropriate for use in promoting a wide variety of services; any trader in the field might make the same sort of appeal to consumers. The applicant argued that the slogan was distinctive because it was made up. The registrar disagreed, adding that even a made-up phrase would not necessarily enjoy distinctiveness as a trademark character. The applicant submitted a preliminary UK Trademarks Office advice suggesting no objection to the mark under the UK equivalent of Section 11(1)(b) of the ordinance, but to no avail.

Grammatical form

I'M LOVIN' IT (Application 300029169, December 21 2004) is a slogan conveying exaggerated sentiment in the present continuous tense. As such, it is an unusual grammatical form of expression. However, the registrar ruled that this slight grammatical deviation does not change the basic character of the mark. It remains a slogan consisting of ordinary English words and is promotional in nature. It cannot distinguish without first informing the public that it is a trademark. The registrar regarded this slogan as typical of the sort of exaggerated statements that are often used in advertising. The applicant submitted New Zealand and Australian registration for the same mark and argued that the registrar should consider these filings as relevant, again to no avail.

Stylization

The slogan 'the Game Des!gners Studio' (Application 300010952, February 21 2005) comprises short words with some stylization. A dot appears before the word 'the', and the dot and the word 'the' are represented in white against a black rectangle. The words 'Game Designers' are written in black against the backdrop of a white rectangle, and the letter 'i' in the word 'Designers' replaced by an exclamation mark. The word 'Studio', mostly in white, is set against a black rectangle and its typeface is different from that of the other words. Recognizing that a mark should be considered as a whole, the registrar considered the mark's various components (as per BONUS GOLD Trademark [1998] RPC 859). The registrar ruled that 'the game designers studio' was appropriate to describe any undertaking involved in the design of games, the subject goods or services covered in the application concerned. The words did not serve to distinguish the applicant's goods and services from those of other traders. Consumers of amusement and entertainment goods and services are accustomed to packaging that is lively and sometimes amusing. From the consumers' perspective, the dot, the letter 'i', the black-and-white contrast and the slightly different typeface of 'Studio' do not suffice to add to the impression created by the individual indistinctive components of the mark. Thus, the mark as a whole does not perform the identifying function that would render it distinctive. The applicant attempted to draw an analogy with other slogans in the register, an unfruitful line of reasoning given that each case is decided on its own merits. The applicant also attempted to disclaim the indistinctive elements of the mark, but the registrar stated that if a mark as a whole is devoid of any distinctive character it must be barred from registration under Section 11(1)(b).

User Evidence

The two most recent decisions concern the slogan 'Life made easier' and its Chinese equivalent. Both phrases were filed for insurance and financial services. The slogans were in plain English or Chinese character marks, and were not stylized or structured differently from the usual grammatical expressions. The relevant question, rephrased by the registrar, was "whether the perception and recollections that the subject mark would trigger in the mind of consumers were likely to be origin specific or origin neutral". The slogans were regarded as appropriate for use in promoting a wide range of goods and services, and hence were considered to be origin-neutral promotional statements.

The two decisions are noteworthy in that the applicant submitted evidence to show acquired distinctiveness which, if established under Section 11(2) of the ordinance, would overcome the indistinctive objection under Section 11(1)(b). For the first time, the Trademarks Registry considered evidence of acquired distinctiveness of a trademark under the new ordinance. The applicant presented a number of insurance policies issued in 2003 with a total face value of $2.4 billion. Samples of advertisements were also submitted. The registrar examined the evidence of use in detail and found that the mark in question was only used on some poster advertisements. No copies of any insurance policies, insurance proposals, letterheads, brochures or business cards were submitted. Moreover, use of the slogan only began 10 months before the filing of the subject trademark application. Other house marks or slogans were in use at the same time and this inevitably diluted the impact of the subject mark on consumers. The registrar found that the mark was used to a limited degree and for a limited scope of services. The slogan was less prominent than other elements of the advertising campaign and the public was unlikely to notice the subject mark as it appeared in small print in a relatively inconspicuous position in the advertisement. The evidence showed that the slogan was more likely to appeal to consumers as a conjunction that connected the questions posed in the advertisements with the provider of the insurance and financial services. As such, the slogan was not advertised as an indicator of trade origin in itself. Finally, since the mark had only been on the market for 10 months, it was considered unable to create sufficient impact on a significant proportion of consumers.

Comment

The Trademarks Registry unambiguously adopts the same test for distinctiveness for all marks. An objection to registration does not arise simply because a mark is a slogan or because it carries any promotional character. The issue is whether the mark differentiates goods or services of one undertaking from others. Offer of disclaimer is no help where the slogan is found to be indistinctive, nor will foreign registration or UK preliminary advice in favour of the mark lend weight to an argument of distinctiveness (although detailed explanation of the UK preliminary advice may perhaps help). It is hoped that further elaboration will be provided in future cases.

A slogan that is neutral in meaning and appropriate for referring to a wide variety of goods and/or services is unlikely to be considered inherently distinctive. A slight twist in grammatical expression will not elevate a slogan to the category of a 'distinctive trademark'. Stylization must be material and in some way outstanding to make an otherwise indistinctive slogan registrable. When relying on the use of a slogan to show acquired distinctiveness, some prominence (eg, large print) and lengthy period of use of the slogan in connection with the goods or services concerned are likely to be necessary, pursuant to the 'Life made easier' rulings. In these two cases, 10 months of prior use was considered too short a time for distinctiveness to have been generated. In fact, the Trademarks Registry Work Manual mentions five years as a useful benchmark for proving acquired distinctiveness.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

 
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”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
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).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions