TRADEMARK GUARDIAN

According to the statute, there are three questions to ask yourself before applying for a trademark in determining distinctiveness.

1. What constitutes similarity of marks;
   • Not separate considerations
     • There is interdependence between the relevant factors
     • In particular a similarity between the trade marks and between the goods or services
     • Case authority: Canon KK v Metro-Goldwyn Mayer Inc [1999] RPC 117 , [17] (ECJ)
2. What constitutes similarity of goods or services; and
   • Interaction
     • A lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
     • Christie Manson & Woods Ltd v Chritrs (Group) Ltd [2012] 5 HKLRD 829 [28]-[29]
3. What constitutes the likelihood of confusion
   • A high degree of similarity
   • Nothing to offset
   • Possible confusing effects
     • Medion AG v Thomson Multimedia Sale
     • – Likelihood of confusion between composite trade mark and earlier mark contained in it
       
     • ① the goods or services covered by competing signs are identical
     • ② the earlier word mark has normal distinctiveness
       • The ECJ: Applying Globle approach: The global appreciation of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, in particular, SABEL, paragraph 23, Lloyd Schuhfabrik Meyer, paragraph 25, and Matratzen Concord, paragraph 29)
       • Reasoning: For average consumer, the overall impression may be dominated by one or more of its components  However, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element.  In such a case the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

• • • Takeaways:
      • The marks have to be examined as a whole;
      • it is quite possible that, in particular circumstances, an earlier mark used by a third party in a composite sign with the third party’s company name can have an independent distinctive role in the composite sign, without necessarily constituting the dominant element;
      • a finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it that is represented by the earlier mark; and
      • the owner of the earlier mark would be deprived of its exclusive trademark rights if there was a requirement that the earlier mark in the composite sign needs to dominate the overall impression of the later composite mark.

The distinctiveness of a trademark is crucial in determining its eligibility for registration. A trademark should possess the ability to stand out and differentiate your goods or services from those of other traders. Whether it is a logo, word, picture, or any other form, your trademark should clearly establish a unique identity that sets it apart.

1. The trademark must be capable of distinguishing from other undertakings (s.3(1) Trade Marks Ordinance)

•  Test – AD2000 Trade Mark [1997] RPC 168
  • “a sign represented graphically is only “capable” to the limited extent of being “not incapable” of distinguishing goods or services of one undertaking from those of other undertakings”

2. The trademark must not be devoid of any distinctive character

• The mark must serve to identify the goods or services as originating from a particular undertaking such that they are distinguished from others
• Test – British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
  • “Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?”
    • The mark must be inherently distinctive, no matter how much it may be used or recognised in practice
    • Question of degree
  • “the distinctiveness of the mark must be assessed by reference to the goods or services for which registration is sought and the perception of the relevant consumers who are reasonably well-informed, observant and circumspect” – Host Hotels & Resorts [2001] 1 HKLRD 541

If your trademark directly describes the goods and services it represents, or if it indicates their quality, purpose, quantity, or value, it is likely to face objections from the trademark authority. Similarly, if your mark incorporates a geographical name, it is also likely to be objected to.

Trade Marks Ordinance s.11(1)(c) prohibits trade marks which:

• consist exclusively of signs which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services

How to determine descriptiveness?

• Factuality & Objectiveness
  • The greater the factual and objective connection between a term and its application in trade, the higher the probability of using the term as a trade designation.

• Perceivability
  • The easier it is for a consumer to understand and recognize a characteristic indicated by a term, the less likely that term will qualify for registration as a trademark.

• Significance
  • If the characteristic designated by a term is essential, central to the product, or of significant importance in a consumer’s decision-making process, it is more likely that the registration of that term as a trademark will be refused.

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