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
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
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
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
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
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
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
If you have any queries regarding the above eNews or on any
intellectual property registration or enforcement matters,
experienced lawyers in our Intellectual Property Department will be
happy to assist you.
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.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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).