Hong Kong: Are Slogans Registrable?

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.

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.

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.

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.

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).

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.

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.