Grounds for Refusal in Trademark Registration Applications

It is imperative, be it from a legal or commercial standpoint, for any business to protect its trademark and prevent its potential unlicensed use by others. Therefore, an application to register a trade mark should be submitted as soon as possible to secure the mark before others do and to avoid the risk of a possible infringement action being issued. This article will highlight some of the most important factors that the Trade Marks Registrar considers when examining the registrability of a trade mark, and which speaks to the elements to be borne in mind during the designing of a trade mark and, in practice, ascertaining the likely deficiencies of a mark before making the application.

Procedure

An application to register a trademark consists of five main stages: filing an application, checking for any deficiencies, the substantive examination, publication for oppositions and registration. During the examination stage, the Registrar of Trade Marks (“the Registrar”) can refuse to register a particular mark if it fails to comply with the relevant requirements of the Trade Marks Ordinance (Cap. 599) (“TMO”).

Absolute Grounds for Refusal

A trademark will not be registered if the mark: -

1. Does not satisfy the meaning of a “trade mark”;
2. Is devoid of any distinctive character;
3. Consists exclusively of signs which may serve, in a trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or rendering of services, or other characteristics of goods or services; or
4. Consists exclusively of signs which have become customary in the current language or in the honest and established practices of the particular trade or business.[1]

Distinctiveness is the essence of a trademark, however, one of the most common reasons for refusing a trademark registration application is that the mark is devoid of any “distinctive” character.

What makes a mark “distinctive” was explored in a recent decision of the Registrar where the applicant sought to register a mark consisting of the ordinary English words “BENEFIT” and “ME”.[2] An objection was raised that the subject mark was wholly devoid of any distinctive characteristics as a mark would only possess a distinctive character if it served to identify the concerned goods and services as originating from a particular undertaking, thus to distinguish it from those goods and services provided by other undertakings. The Registrar elaborated that the distinctiveness of a mark is assessed by reference to the goods and services for which the registration was sought, i.e. the classification, and the perception of the relevant consumers, who were presumed to be reasonably well-informed, circumspect and observant. It was clear that there was nothing fanciful or unusual about the subject mark and it would likely be perceived by the relevant consumers as an ordinary expression or promotional statement. Hence, the subject mark was precluded from registration as it failed to showcase any distinctive characteristic.

Exception to the Absolute Grounds for Refusal

An exception to the absolute grounds for refusal 2, 3 and 4 above is if, before the date of the application for registration, the mark has in fact acquired a distinctive character as a result of the use made of it, in such case a trademark registration application will not be refused.[3]

The Registrar discussed the exception above in the trademark registration application of Koon Chun Hing Kee Soy & Sauce Factory Limited.[4] The application was refused on the basis that the design and colour combination of the mark failed to distinguish it from the design and colour combination used on other packaging. Also, the impression of the subject mark on the relevant consumers only served a decorative function and failed to convey any trade mark significance. However, the applicant submitted that the mark had acquired a distinctive character as a result of the use made of it and, therefore, registration of the mark should not be refused. Nevertheless, the Registrar still refused registration and considered that the subject mark did not fall within the exception for three main reasons: (1) the mark was subsumed as background and the words printed on the packaging were more prominent and distinctive, (2) there was an inconsistency in the use of the subject mark which may signify to the relevant consumers that the subject marked serves as a decorative feature rather than badge of trade origin and (3) there was insufficient evidence that the subject mark had been widely promoted in Hong Kong prior to the registration application. Overall, the subject mark failed to be recognised by the relevant consumers as an indication of trade origin to distinguish the goods of the applicant from those of the others.

Relative Grounds for Refusal

Registration of a trade mark can also be refused on relative grounds in comparison to an earlier trade mark if: -

1. The mark is similar to an earlier trade mark;
2. The classification under which the application for registration is made are either identical or similar to those for which the earlier trade mark is protected; and
3. Use of the trade mark in relation to that classification is likely to cause confusion on the part of the public.[5]

The individual aspects of the relative ground for refusal were cogently outlined in FMTM Distribution Limited’s application to register their mark “FRANCESCO”.[6] The Registrar maintained an objection that the subject mark was similar to the earlier-registered trade mark of “Bella Vita by Francesco” under a similar classification. In comparing the marks, the Registrar will form an overall appreciation of the (1) visual, (2) aural and (3) conceptual similarities of the marks, and they will consider the overall impressions created by the marks on an average consumer with reference to their distinctive and dominant components. Conceptually, the subject mark “FRANCESCO” could be construed as relating to a person called Francesco and similarly, the earlier-registered mark could also be perceived as being provided by a person called Francesco. As a result, the public would likely be confused into believing that the services provided under the two marks originate from the same undertaking or economically linked undertakings. On that basis, the registration application was refused.

Exception to Relative Grounds for Refusal

Notwithstanding the above, where the grounds for refusal only exist in respect of some of the goods or services for which registration is sought, the refusal shall only apply to those goods or services and not the others. Hence, where an application to register a mark is made under multiple classifications, that mark can still be registered under a classification where no grounds for refusal exist. 

Additionally, if the owner of the earlier trade mark consents to the registration of the application then the mark can be registered without objection.

For any enquiries related to this article, please contact  Ms. Lesley McLean  of our firm at (lamclean@robertsonshk.com) or (+852 2861 8404).