The Hong Kong Court of Appeal made a decision against the Court of First Instance and in favour of the Registrar of Trade Marks concerning the registration of “NAKED” for condoms on December 15, 2009.
Earlier in 2009, the Hong Kong High Court of First Instance overruled the decision of the Registrar of Trade Marks in refusing registration of “NAKED” for condoms. The Registrar of Trade Marks had based its refusal on the reason that they conveyed an immediate message that they gave users “naked feeling or sensation” and this was contrary to Section 11(1)(c) as designating a characteristic of the goods. The Registrar of Trade Marks further decided that “naked” described only a characteristic of condoms and failed to perform the essential function of a trade mark in guaranteeing the identity of the origin as required pursuant to Section 11(1)(b) of the Trade Marks Ordinance.
The Judge of First Instance overruled the decision of the Registrar of Trade Marks on the basis that the word “Naked” did not directly describe a characteristic of condoms and therefore did not contravene s.11(1)(d) of the Trade Marks Ordinance on the basis of the following reasoning :-
1. “NAKED” plainly means “being without covering”. A condom is undoubtedly a form of covering;
2. any description which sets out to describe the form of covering represented by a condom as an absence of covering encapsulated in the use of the term “NAKED” neatly and precisely creates a paradox by which there is no discernible link between the “nakedness” and the characteristics of a condom; and
3. any perception of condom characteristics supposedly designated by the word “NAKED” could only be arbitrary or subjective in the variable minds of different persons. Accordingly, there was no real commonality of linkage between “NAKED” and the characteristics of a condom.
Eventually the Registrar of Trade Marks appealed to the Court of Appeal which held that :
(i) The Registrar had very particular experience. No court could have or be expected to have such experience and any departure from the exercise of the discretion of the Registrar must be made on the sound basis after full and most careful consideration given to the views and reasons of the Registrar.
(ii) At the hearing, the Registrar’s Hearing Officer correctly exercised her discretion to reject the mark under Section 11(1)(b). The judge had interfered with that discretion but had not adduced any sound basis for his interference.
(iii) As regards Section 11(1)(c), the approach by the Hearing Officer was entirely correct. She had found that the mark “NAKED” was simply a sign that consists exclusively of a word which may serve to describe and designate the characteristic of the goods i.e. a type of condom that gives the users naked feeling or sensation. Further, in reaching her decision, the Hearing Officer had given valid reasons for doubting the rigid application of the threefold test in Office for Harmonisation in the Internal Market (Trade Marks and Designs) v Wm Wrigley Jr Co (Doublemint) applied in interpreting Article 7(1)(c) of the Trade Mark Regulation (Council Regulation (EC) 40/94). That provides that a brand name consisting exclusively of signs or indications which may serve in trade to designate characteristics of the product concerned may not be registered as a trade mark. The three fold test is:
1. concerning how a term relates to a product. The more objective the relationship is , the more likely the term may be treated as a designation in trade, so registration could be precluded by art 7(1)(c); On the contrary, the more subjective the relationship is the more likely the term will be registered.
2. concerning how a term is perceived: The more ordinary a term is, the more likely a consumer will aware the designation of a characteristic and more likely the application will be refused.
3. concerning the significance of the characteristic of the product. Where the characteristic designated is essential to the product, or is important in a consumer’s choice, then the application will be refused; where it is arbitrary, the case is weaker.