"Life made easier"

Hong Kong
- Registrability
- Slogans

 

Summary

New York Life Insurance Company (the "applicant") applied for the trade mark "Life made easier" claiming insurance and financial services; amongst other things in class 36. ("the Mark")

The Registrar objected under s11(1)(b) of the new Trade Mark Ordinance, Cap559 ("the Ordinance") that the Mark is a phrase which was devoid of any distinctive character.

The applicant argued that since the average consumer's level of attention and circumspection is higher when it comes to selection of insurance and financial services, it is unlikely that they would regard the Mark as merely an advertising statement and they would rather regard the Mark as a trade mark.

In deciding whether the Mark is devoid of any distinctive character, the Registrar applied the following test in British Sugar Plc v. James Robertson & Sons Ltd:

"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 was of the view that the Mark was merely a slogan consisting of ordinary English words which means that a person's life is made easier and simpler and he will have less worries or stress. The Registrar considered that the phrase is apt for use by any financial services provider for promoting its services since it is a common desire of consumers to be able to lead easier lives through the use of such professional services. The Registrar found that an average consumer would consider the Mark as a mere promotional statement used for advertising purposes and consumers would have to be educated, through use of the mark, before they would regard it as a trade mark. The Registrar dismissed the evidence which was filed on the basis that it did not cover all the services claimed, it only related to some services in an indirect and inadequate manner, and there was no information on the scale and scope of the advertising. This is a strong message that advertising has to be clear and that widence submitted will be carefully scrutinized for relevance.

The applicant also argued that since the Registrar did not raise the objection that the Mark was descriptive and related to the services concerned under section 11(1)(c), the Mark should be regarded as being inherently registrable. However, the Registrar pointed out that objections under section 11(1)(b) and 11(1)(c) must be considered separately. The Registrar viewed that when considering an objection under section 11(1)(b), it is irrelevant whether consumers would be swayed by the mark into acquiring the services concerned.

The applicant further argued that the distinctiveness of a mark must be presumed unless it is disapproved. The Registrar rejected the applicant's argument and observed that the Mark is presumed to be distinctive only if the Registrar does not challenge the distinctiveness of the Mark. The Registrar concluded that since objection was raised under Section 11(1)(b), the applicant had the onus of proving that the Mark is not devoid of any distinctive character before the application could proceed to registration.

Finally, the applicant argued that the evidence filed showed substantial use of the Mark and that the Mark has become distinctive through use. In determining whether a mark has become distinctive through use, the Registrar will consider whether consumers have been educated to recognize the Mark as a badge of origin of the services concerned through use. Firstly, the Registrar noted that the applicant's evidence only showed that the Mark was applied to life insurance services but such evidence was indirect and inadequate. The Registrar also noted that when reading the Mark in the context of the advertisements, it is likely that consumers would consider it as part of the slogans used in the advertisement and such impression become stronger where the Mark was placed next to the logo of New York Life. Further, such advertisement was displayed for only 10 months. In considering the evidence as a whole, the Registrar concluded that the applicant's evidence was insufficient to establish that the Mark has become distinctive through use.

The Registrar concluded that the Mark is devoid of any distinctive character and maintained his objection.

The Registrar has refused the registration of the suit mark under s11(1)(b) of the Ordinance.

Decision of the Registrar of Trade Marks dated 10 March 2005 (unreported)