Re Creative Resources Llc
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HCMP 1607/2008 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE MISCELLANEOUS PROCEEDINGS NO. 1607 OF 2008 ----------------------
---------------------- Before: Hon Reyes J in Court Date of Hearing: 9 January 2009 Date of Judgment: 9 January 2009 ------------------------ J U D G M E N T ---------------------- I INTRODUCTION 1.Creative Resources applied to register the word “NAKED” as a trade mark for condoms (a class 10 product). The Registrar refused the application. The Registrar held that the word designated a characteristic of condoms and so was insufficiently distinctive in itself to function as a trade mark. Creative appeals against the Registrar’s decision. II BACKGROUND 2.Trade Marks Ordinance (Cap.559) (TMO) s.11(1) provides:-
3.In her Statement of Reasons dated 1 August 2008, Ms. Vivien Luck (acting on behalf of the Registrar) articulated the reasons for rejecting Curative’s application. 4.First, Ms. Luck observed that the word “naked” was “an adjective that has the dictionary meaning of ‘having no covering’”. She took the view that in the present context the word “naked” would be descriptive of a type of condom, namely, a “condom that gives ... users [a] naked feeling or sensation”. 5.This view was reinforced as a result of 3 internet search hits (now unfortunately no longer retrievable from the web) in all of which traders employed “naked” to describe the feeling of sensation of nakedness which a consumer would supposedly experience upon using their condoms. 6.The 3 internet hits were as follows:-
7.Ms. Luck concluded from the foregoing premises that condom were:-
8.Consequently, Ms. Luck did not think that the proposed mark was registrable by reason of TMO s.11(1)(c). 9.Second, it followed that the proposed mark could not be distinctive. Given that “naked” merely described a characteristic of condoms, consumers were unlikely to treat the mark as identifying condoms belonging to any particular proprietor (such as Creative). 10.The word “NAKED” was thus equally not susceptible to registration by reason of TMO s.11(1)(b). 11.Third, Ms. Luck rejected the submission that “NAKED” should be registered just because marks such as “FOREVER”, “TOGETHER’, “ROMANTIC”, “PRIVATE PLEASURES”, “EXPRESS” and “PRIVATE” had previously been accepted by the Registrar for condoms. 12.Ms. Luck thought that such other marks could well “carry a certain distinctive character”. In any event, each case had to be determined on its own merits so that facts and comparisons with other marks on the Register was not a useful exercise. 13.Fourth, Ms. Luck rejected the submission that “NAKED” should be registered because it has been accepted as a trade mark in the United States, European Community, Japan, South Korea and Mexico. 14.Ms. Luck noted that national trade mark rights were territorially limited and granted independently of each other. Merely because a mark was accepted elsewhere was not a sufficient basis for registration in Hong Kong. Ms. Luck was bound to make her own independent assessment of the suitability for registration of the proposed mark in Hong Kong. III. DISCUSSION 15.Mr. Colin Shipp (appearing for Creative) criticises Ms. Luk’s reasoning on 3 grounds. 16.First, Mr. Shipp submits that Ms. Luck wrongly treated a user’s feeling or sensation on using a condom as equivalent to a condom’s characteristic. 17.Second, Mr. Shipp contends that Ms. Luck attached too much weight to the 3 internet hits. Those references were generated by non-Hong Kong based entities. Accordingly, the hits (Mr. Shipp submits) cannot show how people in Hong Kong would understand the word “naked” when used in relation to condoms. 18.Third, Mr. Shipp says that Ms. Luck placed insufficient weight on the fact that the proposed mark had been accepted in the European Community. TMO s.11(1)(c) is similar to European Community legislation. Given that the European Community consists of native and non-native English speakers, the registration in Europe must be highly relevant (Mr. Shipp suggests) to how non-native English speakers in Hong Kong might understand the word “naked”. A Ground 1: Confusion of sensation with characteristic 19.By this ground Mr. Shipp in effect distinguishes between a term which directly describes a characteristic of a product and a term which indirectly suggests such characteristic. 20.For example, despite being a form of covering, a condom may when used conceivably give one a sensation of “nakedness”. This feeling may be attributable (as Ms. Luck posited) to the “sheerness” of a condom. The condom is so thin that it feels as if one had no covering and was not wearing anything. 21.Mr. Shipp complains that Ms. Luck has conflated the attribute of “sheerness” with the sensation of “nakedness” induced by the attribute of “sheerness”. The attribute and the sensation derived therefrom (Mr. Shipp contends) are not the same thing. 22.How then does one tell where the line is to be drawn between a word which designates a characteristic and another which merely evokes the characteristic? 23.In his Opinion in P OHIM [Office for Harmonization in the Internal Market] v. WM Wrigley Jr. Company (DOUBLEMINT) [2004] RPC 18, Advocate General Jacobs considered this question in the context of European legislation similar to TMO s.11(1)(c). He said (at §§ A57-A66):-
24.I accept that Advocate General Jacobs’ “viewpoints” provide a practical, non-exhaustive guideline for assessing whether a term is descriptive or suggestive of an attribute. 25.Plainly, Ms. Luck regarded the word “naked” as falling within the descriptive end of Advocate General Jacobs’ sliding scale. But, according every respect and deference to Ms. Luk’s views on behalf of the Registrar, I am not persuaded by her assessment. 26.Consider Advocate General Jacobs’ first viewpoint. 27.The term “naked” in fact bears no direct objective relation to a condom. This is because the adjective “naked” would not conventionally be used in English to modify the word “condom”. It would be contradictory to describe a “condom” (a form of covering) as being “naked” (being without covering). 28.That does not mean that a state of “nakedness” can have no relationship with condoms. It would, however, take some imagination to link “nakedness” with any attributes of a condom. 29.One might, for instance, imagine that 2 persons who wish to engage in safe sexual intercourse would desire to have as much intimate physical contact with each other while nonetheless protecting themselves by using a prophylactic device. The less obtrusive the condom as a result of its attributes (including sheerness, colour, weight and comfort), the more exposed and uncovered each person would feel before the other. 30.Accordingly, some possibly desirable attributes of a condom can be suggestive of nakedness, while the state of nakedness itself may suggest attributes which would be desirable in a condom. But such evocations would only be at a remove from objective fact and would require some recourse to subjective imagination. 31.This indirectness is implicitly recognised (I think) in the submission of Mr. Edward Alder (appearing for the Registrar). He argues that “naked” is descriptive (albeit elliptically) of the attribute “permissive of a feeling of nakedness” which a desirable condom might possess. To my mind, however, Mr. Alder’s argument effectively acknowledges that on a sliding scale “naked” is more suggestive than descriptive. 32.Move to the second viewpoint. 33.I would accept that, as a word, “naked” may be as “down-to-earth” as one may get. But again, precisely because of the paradox inherent in describing a form of covering as an absence of covering, the link between “nakedness” and the characteristics of a condom is not immediately discernible. 34.One would need something of the mind of a puzzle enthusiast or (possibly) a poet to perceive the relationship between “nakedness” and the characteristics of a condom. 35.Finally, take the third viewpoint. 36.Ms. Luck posited that the word “naked” was suggestive of the sheerness of a condom. But I am far from certain that such would be the only attribute that “naked” might convey. The feeling of nakedness may, as I have already mentioned, equally arise because of one or more factors, such as the lightness, comfort or transparency of a condom. 37.The reality is that the word “naked” will suggest different bundles of attributes to different persons, depending on the sensibility of their imaginations. The characteristics of a condom that might be conveyed by the word “naked” to any given person would be variable, elusive and incapable of full articulation. 38.I cannot conclude then that the characteristics of a condom supposedly designated by the word “naked” would be otherwise than arbitrary or subjective. 39.Mr. Edward Alder has drawn my attention to 2 cases which he submits support the Registrar’s case by analogy. However, I am unable to draw much assistance from the 2 cases. 40.In SUMMER LOOK (O-358-07, A. Pike, 7 December 2007) it was sought to register the mark “SUMMER LOOK” in respect of cosmetics. There the Appointed Person held (at §19) that the mark would be regarded “as a combination of words indicating that which will be perceived by the relevant consumer as a reference to the season for which these particular goods are most suitable”. 41.It seems to me therefore that “Summer Look” was much closer to being at the descriptive end of the sliding scale. The words describe an attribute of cosmetics, namely, their suitability for use during the summer. 42.In SLIMWEAR (O-146-08, O. Morris, 22 May 2008) it was sought to register the mark “SLIMWEAR” in respect of clothing, footwear and headgear. The Appointed Person disallowed the application in relation to clothing and footwear. This was because he thought (at §11) that the mark “alludes to a type of category of clothing that in some way makes the wearer look slim”. But he allowed the mark for headgear as such “did not strike [him] as being likely to give a slim effect”. 43.Again, it seems to me that the mark “slimwear” was closer to describing an attribute of their intended goods, namely, “wear intended to make the wearer become (even if just on a temporary basis whilst the goods are being worn) slim” (SLIMWEAR AT §15). 44.For all the foregoing reasons, the proposed mark (“NAKED”) does not directly describe a characteristic of condoms. Registration of the proposed mark would therefore not contravene TMO s.11(1)(c). 45.The mark was rejected for registration on the alternative basis that, since the mark described an attribute of the relevant product, it could not be distinctive as required by TMO s.11(1)(b). It follows from my conclusion on TMO s.11(1)(c) that registration would also not contravene TMO s.11(1)(b). 46.Mr. Alder suggests that the word “naked” is incapable of identifying condoms that originate from a particular undertaking. 47.But, in my judgment, since the term is unlikely to evoke a specific bundle of attributes in the minds of consumers, but is instead likely to connote different things to different people, the mark is capable of identifying the products of a particular undertaking in the mind of a given person. In my view, the mark is capable of bearing a distinctive character. 48.Mr. Alder has drawn my attention to DELIBERATELY INNOVATIVE (O/325/07, G. Hobbs QC, 30 October 2007). 49.There the Appointed Person held that the proposed mark (“Deliberately Innovative”) for computer programs could simply be regarded as referring to the goods of “a company which prides itself on adopting a programme of purposefully delivering state of the art technology to the public”. The mark was not enough to designate a particular undertaking in the minds of a person. 50.But this case is different. “Naked” would not normally be taken as a generic description of any undertaking producing condoms. B Ground 2: Internet references 51.Mr. Shipp says that Ms. Luck attached too much weight to the internet hits. 52.But the real issue seems to me not so much the weight to be given to the references, as to their consistency with the foregoing discussion on Ground 1. 53.All three references do not use “naked” to refer directly to some or other particular attribute of a condom. They instead explicitly employ the adjective to describe the supposed feeling or sensation which use of a product will allegedly induce. The adjectives “naked” or “almost-naked” modify the experience to be derived from the product, not the product itself. 54.Thus, if anything, the web hits support the conclusion reached on Ground 1. To use the terminology of Advocate General Jacobs’ sliding scale, the word “naked” is more suggestive of the characteristics of a condom, than descriptive of any specific attributes of a condom. C Ground 3: European registration 55.Mr. Shipp says that weight should have been accorded to the successful registration of “NAKED” in Europe. But, for precisely the reason given by Ms. Luck, I do not derive much help from the bare fact of such registration. IV. CONCLUSION 56.Creative’s appeal against the Registrar’s refusal is allowed.
Mr Colin A Shipp, instructed by Messrs Anthony Evans & Co., for the Appellant Mr Edward Alder, instructed by the Department of Justice, for the Respondent Appeal by the appellant to the Court of Appeal allowed. Please refer to CACV15/2000 dated 18 November 2009 |
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