"SIMPLICITY"

Hong Kong
- Registrability
- Descriptiveness

 

Summary

E.I. DU PONT DE NEMOURS AND COMPANY (“applicant”) applied to register a series of three trade marks: “SIMPLICITY, Simplicity, simplicity”, for nonstructural building materials, namely resin-based solid surface counter tops and vanity tops. The Registrar objected to the mark on the basis that it was descriptive and devoid of any distinctive character. The Registrar considered the dictionary meaning of the word “simplicity” and determined that the mark merely describes the characteristics of the goods applied for which are plain, simple and not complicated in design. The application was rejected under s. 11 (1) (c) of the Trade Marks Ordinance (“TMO”). This section is similar to Art. 7 (1) (c) of the Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community Trade Mark.

The applicant submitted that the ‘SIMPLICITY” mark contested the objection on several basis. Firstly, there is no evidence that the word “simplicity” is particularly common to the related industry. The Registrar responded that it is irrelevant whether there are other more usual signs for designating the same characteristics of goods. Secondly, the word “simplicity” neither describes specifically what the goods are nor the function of the goods. The Registrar said that it was not necessary that the mark describe the good or their function but the mark can be rejected if it designates one or more characteristic of the goods. The Registrar determined that the “SIMPLICITY” mark indicates that the goods, different nonstructural building materials, provided are plain and simple and not complicated in design.

Section 11 (1) (b) TMO precludes from registration signs which are devoid of any distinctive character. The Registrar accepts that the principles relating to distinctive character were laid down in British Sugar Plc v. James Robertson and Sons Ltd [1996] RPC 281 where Jacob J said “What does devoid of any distinctive character mean? I think the phrase requires consideration of the mark on its own, assuming no use. 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 registrar considers this test in the context of the goods claimed and also from the perspective of the average consumer who is reasonably well informed and reasonably observant and circumspect. In considering whether the mark was inherently distinctive, the Registrar emphasized that the essential function of trade mark is to guarantee the identity of the origin of the marked goods or services to the consumers. In addition, it should enable the customers to distinguish the marked goods or services from other trade origins without any possibility of confusion.

The applicant argued that since no one except the applicant used the mark for the similar goods, therefore a reasonably observant customer does not need to proceed to analyze any underlying meaning to recognize the mark as an indication of trade origin. This contention was rejected because it was not supported by evidence of use.

The Registrar reiterated that the critical question to assess distinctiveness of a mark is whether the consumers would perceive the mark as a badge of trade origin. The fact that no other traders in the relevant trade using the mark is not an indication of distinctiveness.

The applicant also argued that this mark has been accepted for registration in the United States and that such registration should significant reference value. This argument was rejected by the Registrar because national trade mark rights are territorially limited and granted independently of other. The registrability of the suit mark is examined based on the requirements in the TMO and the principles established in case law, but not on the bare fact of acceptance in another jurisdiction.

The Registrar held that the “SIMPLICITY” mark is precluded from registration because it is not distinctive and it is descriptive.

This decision denying registration is not surprising.

Decision of the Registrar of Trade Marks (unreported) 13 June 2007 (unreported)