Re Prince Manufacturing Inc.

1989 No. MP1291

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H E A D N O T E

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Appeal against the refusal by the Registrar of Trade Marks to register a trade mark of a tennis racquet with the letter "P" in the centre of the frame surrounded by a border enclosing twice, the words "The Prince Sovereign" and a device of three stars.

Held: 1. Fresh evidence upon the appeal not admissible under section 13(6) of the Trade Marks Ordinance, Disco Vision Trade Mark (1977) R.P.C. 594 and Network 90 Trade Mark (1984) RPC 549 followed.

2. As there was no evidence of user, the Registrar had to decide the issue by way of a prima facie case.

3. The sole issue for determination was whether the mark was distinctive within section 9(1)(e) of the ordinance.

4. Reliance was placed by the appellant upon In re Diamond T Motor Car Company [1921]2 Ch. 583 where the mark was held to be distinctive and adapted to distinguish the goods of the manufacturer. However, in the instant case the Registrar held that neither the individual components of the mark in respect of which the appellant had offered disclaimers under section 16 of the Ordinance nor the mark, as a whole, was distinctive.

5. Although upon appeal the Court has the same discretionary powers as the Registrar, great weight will be placed upon his decision having regard to his expertise so that his decision will not lightly be disturbed, see F. Reddaway & Co. Limited [1927]144 R.P.C. 27.

6. The Registrar had correctly exercised his discretion both in fact and in law. Accordingly, the appeal was dismissed.

1989 No. 1291

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

MISCELLANEOUS PROCEEDINGS

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Coram: Hon. Jones J. in Court

Date of hearing: 12 July 1989

Date for handing down judgment: 28 July 1989

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J U D G M E N T

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1. This is an appeal by Prince Manufacturing Inc. (the appellant), a company incorporated in Princetown, New Jersey, United States, from a decision of Mr M.W. Fox, Acting Registrar of Trade Marks (the Acting Registrar) dated the 14th December 1988 against his refusal to register a trade mark in Part A of the Register under Nos. 1832/1986 and 1832A/1986. The registration was sought in Class 25 for apparel and shoes and in Class 28 for tennis strings, tennis racquets and bags specially adapted for carrying tennis equipment. I set out below the representation of the mark that was applied for in both classes.

2. Further evidence that had not been adduced before the Acting Registrar had been filed by the appellant for the purposes of the appeal but Mr McCoy counsel for the appellant conceded and Mr Wilson counsel for the Acting Registrar, agreed that such evidence was not admissible having regard to the provisions of section 13(6) of the Trade Marks Ordinance which provides that appeals under the section shall be heard only upon the materials placed before the Registrar. My attention was also drawn to Disco Vision Trademark (1977) RPC 594 which was followed in Network 90 Trade Mark (1984) RPC 549 where upon a consideration of the equivalent section in England it was held that additional evidence was not admissible. However, in one Hong Kong decision In re Bausch and Lomb Incorporated (1979) H.K.L.R. 309 Zimmern J. permitted the introduction of evidence that was not before the Registrar, but upon the appeal the Registrar was unrepresented and only the appellant's case was presented. The wording of the section is clear with the result that I ruled that the additional evidence that had been filed was inadmissible.

3. I shall now refer to the relevant parts of the Trade Marks Ordinance.

Section 2(1) :-

"'trade mark' means, ....a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, ....".

Section 9 :-

"(1) A trade mark ..... to be registrable in Part A of the register shall contain or consist of at least one of the following essential particulars –

(sub-paragraphs (a), (b), (c) and (d) are not relevant to this appeal)

(e) any other distinctive mark, .....

(2) For the purposes, of this section 'distinctive' means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connexion subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(3) In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which -

(a) the trade mark is inherently adapted to distinguish as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid,"

4. There was no evidence of user nor of any special circumstances before the Acting Registrar so that he had to proceed by way of a prima facie case.

5. Accordingly, in order to be registrable in Part A, the mark must be adapted to distinguish the relevant goods of the trader.

6. The Acting Registrar objected to the mark in both classes under sub-paragraphs (c), (d) and (e) of section 9(1) of the Ordinance but in an attempt to overcome objections to the various individual features of the mark, the appellant offered to disclaim all the individual components under section 16 of the Ordinance viz the exclusive use separately of the words Prince and Sovereign, the device of stars, the letter P, the device of the racquet and the border device, whilst conceding that the word "the" is not registrable. As I have said sub-paragraphs (c) and (d) are not relevant but the Acting Registrar maintained his objection to the mark as a whole under section 9(1)(e) on the grounds that it is not distinctive of the goods.

7. The sole issue upon this appeal is to determine whether or not the mark is distinctive within the provisions of section 9(1)(e).

8. In his conclusions for his decision, the Acting Registrar on page 5 said :-

"Here there is no such novel idea. I can see other traders genuinely and without improper motive in the course of business wishing to use a similar mark on their goods. There is nothing distinctive about the mark. I believe the device of a racquet with a letter of the alphabet where the strings would be is in use. The device of stars is fairly commonplace, as is a border in or resembling the shape here. The use of the laudatory epithets "Sovereign" and, to a lesser extent, "Prince", also a not uncommon surname, are and should be open for use by traders. A combination similar to the mark in question here could well be the subject of genuinely desired, properly motivated trade use, throwing, as it does, together, in no special way, various generally used components. Even if this is not accepted, the test, it was suggested I should apply, is not a conclusive one. It is the impression created by the mark as a whole that is paramount. Does it suggest a new idea? Is it fanciful? The answer in this case is 'No'."

9. Mr McCoy places reliance upon In re Diamond T Motor Car Company [1921]2 Ch. 583; [1921]38 RPC 373 where a mark consisting of the word "Diamond" and letter "T" in a diamond shape border was held to be distinctive of the appellant's goods subject to a disclaimer of its three component features. There was no evidence of user but there was evidence that the trade mark had been registered in the United States, the country of origin and in many other countries which was regarded to be of considerable importance by the court. It was held that the mark was distinctive for it was affixed to the goods for no other purpose than to indicate that the goods were of the manufacture of the proprietor of the mark and not of some manufacturer and was so adapted to distinguish.

10. The test adopted as a good guide by authority is that set out by Lord Parker in Registrar of Trade Marks v. W. & G. Du Cros, Limited [1913] A.C. 624 at 634 and 635 :-

"...in order to determine whether a mark is distinctive it must be considered quite apart from the effects of registration. The question, therefore, is whether the mark itself, if used as a trade mark, is likely to become actually distinctive of the goods of the person so using it. The applicant for registration in effect says, 'I intend to use this mark as a trade mark, i.e., for the purpose of distinguishing my goods from the goods of other persons,' and the Registrar or the Court has to determine before the mark be admitted to registration whether it is of such a kind that the applicant, quite apart from the effects of registration, is likely or unlikely to attain the object he has in view. The applicant's chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods."

11. A further test of distinctiveness was enunciated in respect of a visual mark in Elliott Machine Tools Limited's Application [1970] R.P.C. 79 where it was held that a useful approach to whether visual distinctiveness was achieved was if the total effect was so striking that it overrode the significance of non-distinctive features in the mark, however prominent.

12. Section 79(2) of the ordinance provides that upon an appeal from a decision of the Registrar, the court shall have and exercise the same discretionary powers under the Ordinance that are conferred upon the Registrar. However, great weight must be attached to the decision of the Registrar who is an expert in his field dealing daily with such applications and his decision should not lightly be disturbed, see F. Reddaway & Co. Limited [1927]44 R.P.C. 27. A court will be slow to interfere with the Registrar having regard to his wealth of experience and skill unless he has improperly exercised his discretion either by making a mistake of law or has clearly come to a wrong conclusion.

13. In coming to a decision as to whether the mark is distinctive in order to be registrable, the mark must be distinctive of the goods of the trader, the mark cannot consist of words of description and the question is very much one of a first impression.

14. Mr McCoy's submission for the appellant can be summarised as follows; first the Acting Registrar, by placing too much emphasis upon such words as "striking" and "a novel idea" in his analysis of the individual components of the mark and therefore lost sight of his task to consider the mark as a whole; second the Acting Registrar in his decision stated that where a case involved multiple disclaimers, there must be one undisclaimed feature of sufficient distinction; third the Acting Registrar had adopted a too conservative, narrow and pedantic approach to the legislation that has stifled creativity; fourth it is in the public interest that the mark be registered, and fifth the instant case is on all fours with the Diamond T Motor car case.

15. None of these arguments has any substance. The use of such words as "striking" or "a novel idea" are unobjectionable for they were merely used by the Acting Registrar in his analysis of the individual components in order to determine whether there are any particular features of distinction. However, at no time despite his analysis aid the Acting Registrar lose sight of his task to consider the mark as a whole. Whether or not his statement that there is a practice in a case of multiple disclaimers that there should be at least one undisclaimed feature of sufficient distinction is correct does not require a decision for the Acting Registrar, as I have said, made his decision upon the mark as a whole. The Acting Registrar, after his analysis of the individual components, found no distinctive features and then looked at the mark as a whole and came to the conclusion that it is not distinctive. The issue of disclaimer therefore did not arise. The third and fourth grounds are irrelevant for the Acting Registrar was only concerned to decide whether the appellant was entitled as a matter of law to have the mark registered. The attempt to draw a parallel with the Diamond T Motor car case is flawed because the mark in that case was not descriptive of the goods whereas the mark in the instant case is descriptive of a tennis racquet.

16. Mr McCoy also contended that the mark is a complex logo which is artistic and amounts to a sophisticated concept. In my judgment, taking into account that the issue is one of first impression, the mark is far from being complex for it consists of no more than a border, either an athletics track or an arena, with the words "the Prince sovereign" and the device of three stars printed at both ends and on each side respectively, and a tennis racquet with the letter P in the centre of the frame. None of the elements are registrable nor do they have any distinguishing features whilst the whole is no greater in this respect than the sum of its individual parts. It amounts to a pictorial representation of the goods.

17. I agree with the Acting Registrar that the mark looked at as a whole is not distinctive. It neither stands out from the ordinary nor is it inherently adapted to distinguish the appellant's goods. The Acting Registrar was right both in fact and in law. Accordingly the appeal is dismissed and there will be an order nisi for costs to the Registrar.

Representation:

Mr G.J.X. McCoy (Deacons) for the Appellant

Mr M.D. Wilson (Attorney General's Chambers) for Registrar of Trade Marks