Trademarks – Whether term descriptive or suggestive of an attribute – Registrar’s discretion – Trade Marks Ordinance (Cap 559) ss 11(1)(b) and (c)

RE CREATIVE RESOURCES LLC [2010] 1 HKC 202
Court of Appeal
Civil Appeal No 15 of 2009
Rogers VP, Stone and Lunn JJ
18 November, 15 December 2009

Anthony Evans & Co for the appellant/ respondent (absent).
John MY Yan SC (Department of Justice) for the respondent/appellant.

Creative Resources (Creative) applied to register the word ‘NAKED’ as a trade mark for condoms. The Registrar refused on the basis that registration was precluded under ss 11(1)(b) and (c) of the Trade Marks Ordinance (Cap 559). On appeal by Creative (see Re Creative Resources LLC [2009] 1 HKC 218), the judge below applied his own views that the characteristics of a condom designated by the word ‘naked’ would be otherwise than arbitrary or subjective and it followed from his decision in respect of s 11(1)(c) that registration did not contravene s 11(1)(b). This was a further appeal by the Registrar.

Held, allowing the appeal:

The discretion as to whether to register a trade mark was a judicial one. It could not be exercised capriciously or unreasonably. The court had traditionally paid considerable respect to the views of the Registrar when considering the exercise of the discretion.

The correct approach was that the Registrar’s opinion had to be fully and carefully considered. The Registrar had very particular experience. Any departure from the way in which the Registrar exercised his discretion had to be made upon a sound basis after giving full and most careful consideration to the Registrar’s views and reasons. The exercise of discretion by the Registrar should not be overruled simply because the court itself might have come to a different conclusion. Essentially, a similar approach should be taken to the exercise of discretion by the Registrar as by a judge.

The judge below used the wrong tests. The question that must be asked was whether, in the absence of evidence of distinctiveness acquired by use, the mark was devoid of any distinctive character.

The fact that a mark did not fall foul of s 11(1)(c) did not and could not affect the position under s 11(1)(b). The two subsections were quite separate. They had to be considered separately.

The judge failed to consider the reasons expressed by the hearing officer. In doing so, the judge interfered with the discretion exercised by the hearing officer without indicating a sound basis for so doing. The hearing officer correctly exercised her discretion in rejecting the mark under s 11(1)(b), and there was no basis for interfering with that exercise of her discretion.

The judge was not justified in departing from the decision of the hearing officer on the basis of her approach to s 11(1)(c), further, the hearing officer was entirely correct in the conclusion to which she came.