"CITIFUND"
Hong Kong
- Registrability
Citibank, N. A. ("Applicant") applied to register the trademark "CITIFUND" under number 2475/1998. The application claimed banking and financial services, financial brokerage services, amongst other things. The Registrar objected to the application on the basis that the mark was not distinctive and not a word that had no direct reference to the character or quality of the services.
The Applicant filed written submissions to overcome the objection. The applicant did not agree that the "CITIFUND" mark was only capable of becoming distinctive and was therefore not prepared to amend the application to Part B of the register. The Applicant requested a statement of the grounds of the Registrar's decision. The Applicant argued that the Registrar had erred in splitting the mark into its constituent parts and thereby failed to consider the mark as a whole.
The Registrar maintained that it was open for him to treat the mark as being a combination of two words. This was the approach taken in the "SCOTCHLITE" case in which the court treated the "SCOTCHLITE" mark as consisting of two words "SCOTCH" and "LIGHT" on the ground that "LITE" was a misspelling of the latter.
In maintaining this objection the Registrar noted that the word "fund" has several common meaning which were descriptive in relation to the services claimed. The Registrar also noted that the prefix "CITY" conveyed the idea that the services were offered by the applicant to inhabitants of a city. The Registrar noted that if a word is directly descriptive in its correct spelling then its phonetic equivalent was also unregistrable. The Registrar relied on the general principle that the fact the mark ("CITYFUND") cannot be found in any dictionary does not advance the applicant's position that it is an invented word.
The Registrar indicated that without evidence of distinctiveness through use in Hong Kong she would maintain objection.
Decision of the Registrar of Trade Marks dated 22 January 2000 (unreported)
