Under Section 11(1)(B), a Trade Mark Cannot Be Accepted for Registration If It Is Devoid of Any Distinctive Character

TRADE MARKS ORDINANCE (CAP. 559)

APPLICATION NO. : 301531773

MARK : APPLICANT : P.T. SARI INCOFOOD CORPORATION CLASS : 29 ______

STATEMENT OF REASONS FOR DECISION

Background

1. On 27 January 2010 (the “Date of Application”), P.T. SARI INCOFOOD CORPORATION (the “Applicant”) filed an application for registration of the mark shown below (the “Subject Mark”) under the Trade Marks Ordinance (Cap. 559) (the “Ordinance”).

2. At the examination stage, objections were raised under section 11(1)(b) and section 11(1)(c) of the Ordinance on the basis that the Subject Mark is devoid of any distinctive character as it is unlikely to be perceived as a badge of trade origin that guarantees the identity of a particular undertaking and that the Subject Mark consists exclusively of signs which may serve in trade or business to designate the characteristics of the goods applied-for. Despite restriction of the specification of goods to “creamer” in Class 29 (the “Applied-for Goods”) and submissions made on behalf of the Applicant, the objections were maintained by the Registrar.

3. The Applicant requested a hearing on the registrability of the Subject Mark. The hearing took place before me on 31 July 2013, at which Mr. Philips B. F. Wong, counsel, instructed by Eccles & Lee (the “Agent”), appeared on behalf of the Applicant. I reserved my decision at the end of the hearing.

- 1 - 4. In support of the subject application, the Applicant had filed the following statutory declarations with a view to showing that the Subject Mark had in fact acquired a distinctive character as a result of the use made of it for the purpose of section 11(2) of the Ordinance:

(a) Statutory Declaration of Joe, Hng Sek Khoen dated 12 April 2012 (the “Hng’s Declaration”); (b) Statutory Declaration of Michael Sik Ho Lee dated 5 June 2013; and (c) Statutory Declaration of Rudy Chandra dated 5 June 2013 (the “Chandra’s Declaration”)

(collectively, the “Statutory Declarations”).

5. Having carefully considered all the documents filed by the Applicant together with all the oral and written submissions made in respect of the subject application, I was not convinced that the objections raised under section 11(1)(b) and section 11(1)(c) of the Ordinance could be waived. However, in light of the Statutory Declarations, I was satisfied that the Subject Mark could proceed to registration on the ground that it has in fact acquired a distinctiveness character as a result of the use made of it under section 11(2) of the Ordinance.

6. On 29 January 2014, the Registrar issued a notice of his decision to accept the subject application under section 42 of the Ordinance, on the ground that the Subject Mark has in fact acquired a distinctiveness character as a result of the use made of it under section 11(2) of the Ordinance. On 5 February 2014, the Agent requested a statement of reasons for the Registrar’s decision pursuant to rule 91(2) of the Trade Marks Rules (Cap. 559A). The statement of reasons is now given as follows.

The Ordinance

7. The absolute grounds for refusal of an application for registration are contained in section 11 of the Ordinance. The relevant provisions under section 11 read as follows:-

“(1) Subject to subsection (2), the following shall not be registered –

(a) ………… (b) trade marks which are devoid of any distinctive character; (c) 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; and (d) …………

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(2) A trade mark shall not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”

Decision

8. Having carefully considered the relevant facts of this application, I am of the view that the objections raised under section 11(1)(b) and section 11(1)(c) of the Ordinance should be maintained. However, in light of the Statutory Declarations, the Subject Mark can proceed to registration on the ground that it has in fact acquired a distinctiveness character as a result of the use made of it under section 11(2) of the Ordinance. The reasons for refusing registration of the Subject Mark on a prima facie basis are set out below.

Section 11(1)(c) of the Ordinance

9. Section 11(1)(c) of the Ordinance precludes from registration trade marks which consist exclusively of signs that are descriptive of the goods or services in respect of which registration is sought or some characteristics of them.

10. In Wm. Wrigley Jr. Company v OHIM (Case-191/01P) [2004] R.P.C. 18 (the “DOUBLEMINT” case), the European Court of Justice (the “ECJ”) discussed the approach to Article 7(1)(c) of the Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community Trade Mark (“Regulation No 40/94”), which is broadly similar to section 11(1)(c) of the Ordinance, and stated the relevant principles as follows (at paragraphs 29 to 32):

“29. Article 7(1)(c) of Regulation No 40/94 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered.

30. Accordingly, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication- of-origin function of the trade mark, without prejudice to the possibility of their acquiring distinctive character through use under Article 7(3) of Regulation No 40/94.

31. By prohibiting the registration as Community trade marks of such signs and indications, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods

- 3 - or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see, inter alia, in relation to the identical provisions of Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Windsurfing Chiemsee , paragraph 25, and Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR I-3161, paragraph 73).

32. In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.”

11. The ECJ also decided in Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] E.T.M.R. 57 that (at paragraphs 98 to 100):

“98. As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Art.3(1)(c) of the Directive. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned.

99. However, such a combination may not be descriptive within the meaning of Art.3(1)(c) of the Directive, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements. In the case of a word mark, which is intended to be heard as much as to be read, that condition must be satisfied as regards both the aural and the visual impression produced by the mark.

100. Thus, a mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of those characteristics for the purposes of Art.3(1)(c) of the Directive, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes either that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the

- 4 - result that the word is more than the sum of its parts, or that the word has become part of everyday language and has acquired its own meaning, with the result that it is now independent of its components. In the second case, it is necessary to ascertain whether a word which has acquired its own meaning is not itself descriptive for the purpose of the same provision.”

12. According to the legal principles laid down above, for a mark to be precluded from registration under section 11(1)(c) of the Ordinance, it does not need to be in use at the time of the application for registration in a way that is descriptive of the goods or services. It is sufficient if it can be used for such purpose. In addition, a mark must be debarred from registration if at least one of its possible meanings designates a characteristic of the goods or services applied for.

13. The Subject Mark comprises the English words “INDO” and “CREAMER” presented in an ordinary typeface with the letter “C” in a slightly bigger font. The two words are arranged in two rows. Directly above the word “INDO” is a straight horizontal line. Underneath the word “CREAMER” is a device of a spoon with some powder pouring from it into a cup of drink. Although the representation of the Subject Mark is in colour, the Applicant has not claimed any colour as an element of the Subject Mark.

14. At the examination stage, it was pointed out that the term “INDO” is a prefix meaning “India” and the word “CREAMER” means “a cream substitute, used especially in coffee or tea” (Encarta@ World English Dictionary). When used in relation to the Applied-for Goods, namely creamer, the Subject Mark indicates that the goods are creamer from India. The device of a spoon with powder pouring from it into a cup of drink simply conveys the idea that the creamer is in powder form and can be added to drinks. The horizontal line directly above the word “INDO” only serves as a decoration and does not enhance the distinctiveness of the mark. As a whole, the Subject Mark consists exclusively of signs which designate the characteristics of the Applied-for Goods.

15. At the hearing, Mr. Wong submitted that the Subject Mark cannot convey the idea suggested by the Registrar at the examination stage as the term “INDO” is a prefix in a single word or a hyphenated word, e.g. Indology, Indomania, Indophobia, Indo- European, etc.. It is not a word that can be used separately or independently. Mr. Wong further submitted that the term “INDO” has no definite meaning to members of the general public. It can denote Indonesia, Indo-China regions, etc. Even if the Registrar is of the view that the public must be able to recognize the term “INDO” as “Indian”, Mr. Wong was of the view that at most the term “INDO CREAMER” can only be said to be allusive as to the style of the goods in question, that the creamer product may have adopted Indian or Indonesian style, but that message can

- 5 - only be formed upon analyzing the words instead of instantly upon seeing the words as Indian creamer is not a recognized type of creamer. He cited the UK Registry cases TRADESAFE Trade Mark (Case O/007/09, decision of 8 January 2009, at paragraphs 39 to 40) and SUIT EXPRESS Trade Mark (Case O/124/99, decision of 5 April 2000, at paragraphs 21 to 22) in support of his submission.

16. In the TRADESAFE Trade Mark case, the applicant for a declaration of invalidity argued that goods sold under the mark “TRADESAFE” would be viewed by the average consumer as being of a higher standard or better quality as it would be suitable for tradesmen. The Hearing Officer in that case rejected this contention. He noted that although at one time certain establishments would not sell to the general public, and that the quality of goods available to the general public was lower than that available to trades or business people, it was no longer the case in 2009 when the TRADESAFE Trade Mark case was decided. The Hearing Officer was therefore of the view that upon seeing the mark “TRADESAFE”, the average consumer would not envisage the possible message that goods sold under the mark “TRADESAFE” would be of a higher standard or better quality. Such message would only be perceived by those who analyse the mark.

17. In the SUIT EXPRESS Trade Mark case, the applicant applied to register the mark “SUIT EXPRESS” in respect of “clothing; footwear, headgear; all included in Class 25”. The opponent contended that other traders may use the words “SUIT EXPRESS” to convey the message that they will find the customer a suit to his or her requirements very quickly. The Hearing Officer in that case disagreed as such a statement does not say anything about the characteristics of the goods themselves. The most that can be said about the words “SUIT EXPRESS” is that they allude to a possible style of retail operation. The opponent also submitted that the words “SUIT EXPRESS” designate a characteristic of “made to measure” suits and that these words may serve, in trade, to designate the speed with which such suits may be made up. This argument was also dismissed by the Hearing Officer as the applicant was applying to register the mark in respect of goods rather than services.

18. Apart from the two UK Registry cases mentioned above, Mr. Wong also referred to the decision of the Appointed Person in NMSI Trading Ltd’s Trade Mark Application [2012] R.P.C. 7 and the decision of Richard Arnold Q.C. (sitting as a deputy High Court judge) in Hormel Foods Corp v Antilles Landscape Investments NV [2005] R.P.C. 28 to support his submission that the Subject Mark should be considered as a whole. Instead of the word mark “INDO CREAMER”, the Subject Mark also consists of a straight horizontal line and a device of a spoon with powder pouring from it into a cup of drink. Mr. Wong submitted that the straight horizontal line cannot be regarded as descriptive of creamer product. He further contended that the device of a spoon with powder pouring from it into a cup of

- 6 - drink, at most, can only be said to be alluding to a possible way of using the Applied-for Goods and should not be considered as descriptive of creamer product.

19. In NMSI Trading Ltd’s Trade Mark Application, the appellant had applied to register a mark comprising the words “FLYING SCOTSMAN” and the device of a representation of a steam locomotive. Objections under section 3(1)(b) and section 3(1)(c) of the Trade Marks Act 1994, which are broadly similar to section 11(1)(b) and section 11(1)(c) of the Ordinance, were raised against certain goods in Classes 9, 16 and 28. In his decision, the Appointed Person reiterated that a trade mark should be assessed “without dismemberment or excision” (paragraph 28). He went on to hold that the hearing officer’s approach was untenable as the hearing officer tested the application for registrability under section 3(1)(c) of the Trade Marks Act 1994 as if it was an application for registration of the words and nothing more.

20. In Hormel Foods Corp v Antilles Landscape Investments NV, the claimant sought a declaration that the defendant’s trade mark “SPAMBUSTER” written in stylized form registered in respect of computer programming in Class 42 was invalid under section 47(1) of the Trade Marks Act 1994 as having been registered in contravention of section 3(1)(b), (c) or (d) of the Trade Marks Act 1994 (broadly similar to section 11(1)(b), (c) and (d) of the Ordinance). Richard Arnold Q.C. held that the mark “SPAMBUSTER” was objectionable under section 3(1)(c) of the Trade Marks Act 1994 even though it was presented in a fancy font type. Nonetheless, he opined in the obiter dicta (at paragraph 149) that the position would be different if, instead of being merely presented in a fancy font type, the mark contained visual elements in addition to the word, such as a device comprising the word “SPAMBUSTER” in a particular font type followed by an exclamation mark and surrounded by an oval.

21. In this case, given that customers usually view a mark as a whole without examining its various details, they are likely to perceive the term “INDO CREAMER” without analysing its grammatical structure. It is doubtful that they will notice anything unusual with the use of the term “INDO” as an independent word instead of a prefix. In addition, consumers are used to seeing grammatically incorrect phrases in promotional messages printed on products as short and punch messages are generally more likely to attract the consumers’ attention.

22. It is immaterial that the term “INDO” could have different meanings. What is essential is the fact that the term “INDO CREAMER” could be used to describe the characteristics of the Applied-for Goods. In light of the fact that the term “INDO” could mean “India” (as indicated by the Registrar during the examination stage) or could denote “Indonesia” or the “Indo-China region” (as submitted by Mr. Wong),

- 7 - to my mind, the term “INDO CREAMER” simply indicates that the Applied-for Goods are creamer from a particular country or region, be it India, Indonesia or the Indo-China region.

23. Contrary to Mr. Wong’s submission that the device of a spoon with powder pouring from it into a cup of drink merely alludes to a possible way of using the Applied- for Goods and should not be regarded as descriptive of creamer product, it is my view that the device is being used simply and solely to designate the nature and characteristics of the Applied-for Goods, namely that the Applied-for Goods are creamer in powder form.

24. As regards the straight horizontal line directly above the word “INDO”, it would be seen by the relevant consumer as no more than a minor stylistic embellishment which does not have any impact on the overall impression of the Subject Mark. At most, the horizontal line simply highlights the word element in the Subject Mark and is not unusual in the market at all. Such trivial embellishment should not be treated as on par with the visual elements discussed by Richard Arnold Q.C. in the obiter dicta of Hormel Foods Corp v Antilles Landscape Investments NV mentioned in paragraph 20 above. An exclamation mark is a punctuation mark which is often used after a declaration or an exclamation to indicate extreme emotion such as a warning. It may, in appropriate cases, confer some distinctiveness to a sign and renders the sign, as a whole, registrable as a trade mark. However, I must emphasize that it is a matter of judgment in each case, bearing in mind factors such as the goods or services concerned and the relevant consumers of the goods or services.

25. The relevant consumer does not normally pause to analyze trade marks that come to their attention. What matters is the impression that each trade mark as a whole is likely to give to the average consumer of the goods or services concerned. Accordingly, when the relevant consumer sees the Subject Mark, he would not dissect it into “INDO CREAMER”, a straight horizontal line and a device of a spoon with powder pouring from it into a cup of drink and examine each element on its own. Instead, the Subject Mark will be viewed as a whole without dismemberment or excision, and will be taken to convey an immediate and direct message that the Applied-for Goods are creamer from India, Indonesia or the Indo- China region and that such creamer is in powder form and can be added to drinks. This perception does not require a measure of interpretation on the part of the relevant consumer. Despite the fact that the Subject Mark consists not only of the word element “INDO CREAMER” but also a straight horizontal line and a device of a spoon with powder pouring from it into a cup of drink, to my mind, the Subject Mark remains wholly descriptive.

26. Unlike the mark in issue in the TRADESAFE Trade Mark case, upon seeing the Subject Mark, the average consumer would immediately envisage the message suggested without having to analyse the mark. The Subject Mark and the mark in issue in the SUIT EXPRESS Trade Mark case are also dissimilar, as the Subject Mark does designate the nature and characteristics of the Applied-for Goods. Therefore, the two UK Registry cases referred to by Mr. Wong have to be distinguished.

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27. In light of the above, I am satisfied that the Subject Mark consists exclusively of a sign which may serve, in trade or business, to designate the nature and characteristics of the Applied-for Goods. Accordingly, the Subject Mark is precluded from registration in respect of the Applied-for Goods under section 11(1)(c) of the Ordinance.

28. Having found that the Subject Mark is debarred from registration by section 11(1)(c) of the Ordinance, it is not necessary for me to consider other grounds of refusal under the Ordinance. However, for completeness, I will go on to consider the application under section 11(1)(b) of the Ordinance. The objection under section 11(1)(b) of the Ordinance operates as a ground for refusal separate and independent from that under section 11(1)(c) of the Ordinance.

Section 11(1)(b) of the Ordinance

29. Section 11(1)(b) of the Ordinance precludes from registration trade marks which are devoid of any distinctive character.

30. In Host Hotels & Resorts, L.P. v Registrar of Trade Marks [2010] 1 HKLRD 541, the Hon Sakhrani J cited with approval the following cases at paragraphs 17 to 18:

“17. In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 Jacob J (as he then was) said at page 306 :

“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?”

18. In Nestle SA’s Trade Mark Application (Have A Break) [2004] FSR 2 Sir Andrew Morritt VC (as he then was) said at paragraph 23 :

“The distinctiveness to be considered is that which identifies a product as originating from a particular undertaking. Such distinctiveness is to be considered by reference to goods of the class for which registration is sought and consumers of those goods. In relation to the consumers of those goods the court is required to consider the presumed expectations of reasonably well informed, and circumspect consumers. For my part I would particularly emphasise that the relevant distinctiveness is that which identifies a product as originating from a particular undertaking……””

- 9 - 31. Applying the above legal principles, for the Subject Mark to possess distinctive character, it must serve to identify the Applied-for Goods as originating from a particular undertaking and therefore distinguish such goods from those of the other traders. In assessing the distinctiveness of the Subject Mark, I must take into account the Applied-for Goods as well as the perception of the average consumer of those goods, who is presumed to be reasonably well informed and circumspect.

32. The Applied-for Goods, namely “creamer”, are widely used consumer goods. The relevant consumers are therefore ordinary members of the general public.

33. The Subject Mark comprises the English words “INDO CREAMER”, a straight horizontal line and a device of a spoon with some powder pouring from it into a cup of drink. When the relevant consumer sees the Subject Mark used in relation to the Applied-for Goods, he will view the Subject Mark as a whole without dismemberment or excision. Given the descriptive nature of the Subject Mark when applied to the Applied-for Goods as explained in paragraphs 21 to 26 above, without first being educated, the relevant consumer would perceive the Subject Mark as referring to the nature and characteristics of the products, namely that the Applied-for Goods are creamer from India, Indonesia or the Indo-China region and that such creamer is in powder form. In the mind of the relevant consumer, the impression triggered by the Subject Mark as a whole would be origin neutral, rather than origin specific.

34. Having considered the Subject Mark in its totality in respect of the Applied-for Goods, I do not find that the mere combination of the English words “INDO CREAMER”, a straight horizontal line and a device of a spoon with some powder pouring from it into a cup of drink creates a badge of trade origin from the relevant consumer’s viewpoint. Unless educated otherwise, the relevant consumer is likely to regard the Subject Mark as a sign which does nothing more than indicating the nature and characteristics of the Applied-for Goods. The Subject Mark is devoid of any distinctive character and is precluded from registration under section 11(1)(b) of the Ordinance.

Reference to the registration of the Subject Mark in other jurisdictions

35. Paragraph 6 of the Hng’s Declaration referred to the registration of the Subject Mark in other jurisdictions, supported by copies of certificates of registration submitted under exhibit marked “Exhibit A”. Trade mark rights are territorial in nature and are granted in each jurisdiction independently. Since the reasons for the acceptance of the Subject Mark in those foreign jurisdictions are not known to me, I do not consider those registrations to be of assistance to this application.

Reference to prior registered trade marks on the register

36. Paragraph 5 of the Chandra’s Declaration provided a list of trade marks which contain the term “INDO” and which were accepted for registration in respect of various goods and services by the Hong Kong Trade Marks Registry prior to the Date of Application. Copies of printouts from the online database of the Hong

- 10 - Kong Trade Marks Registry were submitted under exhibit marked “XX-1” of the Chandra’s Declaration.

37. I have considered the prior marks referred to but I do not find them to be on par with the Subject Mark. In any event, it is a well-established principle that each case must be considered on its own merits and comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration. In British Sugar Plc v James Robertson & Sons Ltd, Jacob J said at page 305 that “It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark and the same must be true under the 1994 Act. I disregard the state of the register evidence.”

38. I therefore find that prior registrations of trade marks consisting of the term “INDO” do not assist the subject application. In particular, as there are valid reasons for objecting to the subject application, I do not consider that the Subject Mark can be accepted solely on the basis of those prior registered trade marks.

Conclusion

39. I have carefully considered all the documents filed by the Applicant together with all the oral and written submissions made in respect of the subject application. For the reasons given, I find that the Subject Mark is precluded from registration in respect of the Applied-for Goods under section 11(1)(b) and section 11(1)(c) of the Ordinance.

40. However, on the totality of the evidence of use before me, I accept that there had been sufficient use of the Subject Mark by the Applicant in Hong Kong prior to the Date of Application, i.e. 27 January 2010, in relation to the Applied-for Goods to justify a finding that the Subject Mark has acquired a distinctive character as a result of the use made of it. I therefore find that the Subject Mark is accepted under section 42 of the Ordinance, on the ground that it has in fact acquired a distinctiveness character as a result of the use made of it under section 11(2) of the Ordinance.

Janette SHAM for Registrar of Trade Marks 25 July 2014

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