TRADE MARKS ORDINANCE _Cap 559_ APPLICATION NO 301059750 MARK

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TRADE MARKS ORDINANCE _Cap 559_ APPLICATION NO  301059750 MARK Powered By Docstoc
					TRADE MARKS ORDINANCE (Cap. 559)

APPLICATION NO.            : 301059750

MARK                       :


APPLICANT                  : LAM CHOR SUEN trading as FAR EAST TRADING CO.

CLASSES                    : 25

____________________________________________________________________


STATEMENT OF REASONS FOR DECISION

Background

1.   On 26 February 2008, Lam Chor Fai and Lam Chor Ping trading as Universal
     (Far East) Trading Co. (“Universal”) filed an application for the registration of
                (“the subject mark”) pursuant to the provisions of the Trade Marks
     Ordinance (Cap.559) (“the Ordinance”). The application is in respect of
     “clothing, footwear, headgear” in class 25. The application was subsequently
     assigned to Lam Chor Suen trading as Far East Trading Co. (“the applicant”).


2.   At the examination stage, objections were raised against the application under
     section 11(1)(b) and (c) of the Ordinance on the grounds that the subject mark
     consists exclusively of a sign which designates the characteristics of the goods
     applied for and that it is devoid of any distinctive character. Despite
     submissions made and evidence filed 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 and
     this was held before me on 9 December 2009. Ms. Elsa Chiang of Able
     Consultancy Services Limited represented the applicant at the hearing. I
     reserved my decision until after the conclusion of the hearing.


4.   In addition to the submissions on the inherent registrability of the subject mark, a
     statutory declaration was filed during the examination stage to show that the
     subject mark has acquired distinctiveness through the use that has been made of



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     it. At the hearing, Ms. Chiang passed to me another statutory declaration in
     supplement.


Grounds of refusal under section 11

5.   The absolute grounds for refusal of an application for registration of a trade mark
     are set out in section 11 of the Ordinance. Subsections (1) and (2) are relevant
     here and they read as follows:


     “(1) Subject to subsection (2), the following shall not be registered –
     (a) signs which do not satisfy the requirements of section 3(1) (meaning of
          “trade mark”);
     (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) trade marks which consist exclusively of signs which have become
          customary in the current language or in the honest and established practices
          of the trade.


     (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

6.   At the hearing, Ms. Chiang made no submissions on the inherent registrability of
     the subject mark. Nevertheless, I shall deal with the prima facie case before
     proceeding to an analysis of the evidence filed.


Inherent registrability – Section 11(1)(c)


7.   The subject mark is constituted by the English word “TOMBOY”. The letters
     are all in capital and the font adopted is a very simple one. There is no
     stylization or the adoption of a particular script form in the presentation of the



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     word.


8.   The application is made in respect of “clothing, footwear, headgear” in class 25.
     These are items everyone uses everyday. The relevant consumers are thus
     members of the general public. They are reasonably well-informed and
     circumspect but they cannot be expected to exercise more than an average level
     of care and attention in their selection of such products.


9.   As pointed out to the applicant during the examination stage, according to the
     Encarta® World English Dictionary, “TOMBOY” means “boyish girl – a girl
     who dresses or behaves in a way regarded as boyish, especially a girl who enjoys
     rough boisterous play”. When used on clothing, footwear and headgear, the
     message conveyed by the subject mark is clear. It denotes that the goods are
     designed for boyish girls or are for girls who like to dress in a boyish fashion.
     Use of the word “TOMBOY” by other traders in relation to the goods applied for
     is common and examples found on the internet were referred to the applicant
     during the examination stage. Details of these internet references are listed in
     the Appendix hereto. The subject mark has no other elements. It is therefore a
     mark that consists exclusively of a sign which designates a characteristic of the
     goods applied for and is precluded from registration under section 11(1)(c) of the
     Ordinance.


Inherent registrability – Section 11(1)(b)


10. In light of the clear message conveyed by the subject mark, it will only be
    perceived by the relevant consumers of the goods applied for as a designation of
    a characteristic of the goods in question and not as an identifier of trade source.
    Objection is therefore raised against the subject mark under section 11(1)(b) of
    the Ordinance as well.


11. Guidance on the test to apply in assessing whether a mark has any distinctive
    character can be drawn from a number of UK cases. In the case of British
    Sugar Plc v James Robertson and Sons Ltd [1996] RPC 281, Jacob J (at page
    306) set out the test as follows –


     “What does devoid of distinctive character mean? I think the phrase requires



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     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?”


12. In the case of Nestle SA’s Trade Mark Application (Have a Break) [2004] FSR
    2 (at paragraph 23), the test is phrased as follows –


     “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.”


13. In assessing the distinctiveness of the subject mark, I have to consider whether it
    will be perceived as a badge of trade origin. The assessment is to be carried out
    in respect of the subject mark, with reference to the goods of the class for which
    registration is sought, as well as the consumers of those goods, who are
    reasonably well-informed and circumspect.


14. As noted in the above, the average consumer of the goods applied for does not
    pay too much attention in the purchase of such products. In view of the strong
    descriptive signification of the subject mark, without first having been educated
    of its function to indicate trade source, it will only be perceived as a sign that
    designates the characteristic of the goods. The subject mark is therefore devoid
    of any distinctive character and is precluded from registration under section
    11(1)(b) of the Ordinance.


Acquired distinctiveness


15. Under section 11(2) of the Ordinance, a trade mark that is precluded from
    registration under section 11(1)(b) and/or (c) of the Ordinance may still be
    accepted for registration if it has acquired a distinctive character through the use
    that has been made of it. The applicant seeks to rely on section 11(2) and has,
    in all, submitted two statutory declarations made by Lam Chor Suen himself, one
    on 15 June 2009 (“First Declaration) and the other on 8 December 2009



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     (“Second Declaration”).


16. In the case of Windsurfing Chiemsee Produktions-und Vertriebs GmbH v
    Boots-und Segelzubehor Walter Huber and Franz Attenberger [1999] E.T.M.R.
    5851, the relevant test was laid down by the Court of Justice of the European
    Communities as follows, at paragraph 54 ––


     “…a trade mark acquires distinctive character following the use which has been
     made of it where the mark has come to identify the product in respect of which
     registration is applied for as originating from a particular undertaking and thus
     to distinguish that product from goods of other undertakings.”


17. Both declarations are short and succinct. The picture presented can easily be
    summarized as follows – the subject mark was first used by Universal, the party
    from whom the subject mark was assigned to the applicant, in 1992; Universal
    agreed to the taking over of this application by the applicant in order to expand
    the business of products bearing the subject mark; the subject mark was first
    used by Universal in 1992 and then continuously by Universal and the applicant
    in relation to the goods applied for.


18. The materials exhibited to the First Declaration are copies of the business
    registration certificates of Universal and the applicant, sales invoices,
    manufacturing invoices and invoices for placing advertisements of the subject
    mark. Additional materials are provided as exhibits to the Second Declaration
    and these are computer-generated invoices, computer-generated sales reports,
    samples of invoices of promotional expenditure incurred and samples of
    manufacturing orders, all for the period of 2003-2007. On the face of it, the
    position presented by the evidence is a simple one, but upon a closer examination,
    it is found to be fraught with unexplained details.


19. In the first place, quite a few manufacturing invoices have been submitted.
    These only show that labels, tags and printed fabric had been made. The
    employment of these items on the goods applied for and the sale of the
    manufactured products in Hong Kong cannot be demonstrated by such invoices.

1
  The case is concerned with Article 3(3) of the First Council Directive 89/104/EEC which is broadly
similar to section 11(2) of the Ordinance.



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    I would add that with the sample orders exhibited to the Second Declaration,
    they were all issued to “东丰制衣厂”, a party whose relationship with the
    applicant or Universal has not been accounted for. I do not therefore consider
    any of the manufacturing invoices to be of assistance to the case in hand.


20. There are similar concerns with the invoices for the promotion of the subject
    mark. A total of eight such invoices have been produced under the First
    Declaration. One of them bears a date after the date of the filing of this
    application and is hence disregarded. The others are all dated between the years
    of 1995 and 1997 and are thus quite old. What is more important however is
    that there is no information at all in any of these invoices about the goods being
    advertised, or whether the catalogues, posters, leaflets etc. that were produced
    show the use of the subject mark on clothing, footwear and headgear in Hong
    Kong. With the invoices relating to promotion and filed as exhibits to the
    Second Declaration, they are all issued to a party called “TOMBOY”. Again,
    the basis for regarding such invoices as relating to the business conducted by the
    applicant or Universal has not been mentioned in either of the declarations.


21. On the cause of the doubt I have on the relevance of the aforesaid invoices to the
    Hong Kong market, I would refer to two points noted from the review of the
    evidence filed. In one of the invoices on advertising expenditure submitted
    under the First Declaration (the one dated 30 December 1996), the services are
    indicated as being provided to four shops. Against each shop so listed in the
    invoice is handwritten its location, and they are shops in Guangzhou, Dongguan,
    Shenzhen and Shatow of China. It can therefore be the case that all the
    promotional expenditure so incurred was incurred for the promotion of the
    subject mark in places other than Hong Kong. The second point arises from the
    fact that all the promotion-related invoices that have been submitted with the
    Second Declaration were issued by an advertising company in Dongguan, China
    and the currency of the amounts was all in RMB. In one of them, the item
    billed is the replacement of a sign box. Such services would have entailed the
    presence of the personnel of the advertising company at the location of the
    replacement and had the services been performed in Hong Kong, the advertising
    company would have to have a business registration in Hong Kong and the
    invoice should not have been made out in RMB. Such state of affairs calls for
    explanation but there is none in the declarations filed.



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22. The only other invoices found in the exhibits are sales invoices. In the case of
    the First Declaration, only three invoices seem to relate to sale of goods to third
    parties. The type of goods that the invoices relate to is not apparent from the
    invoices themselves and there is nothing provided to indicate that they are for
    clothing, headgear or footwear. In any event, with two of the invoices, they
    bear dates posterior to the date of the filing of this application. They are thus of
    no assistance to this application. With the third one which is dated 25 June
    2007, it was issued in the name of Far East Trading Co. but this company was
    deposed to as being established only in 2008. As this does not tally with the
    year of establishment of the company averred to in paragraph 2 of both
    declarations, I cannot, in the absence of proper explanation, accept it as
    verification of the use made of the subject mark by the applicant.


23. Sales invoices have also been submitted with the Second Declaration but they are
    generated by computer. The reason for generating such invoices has not been
    given and the applicant had been able to provide copies of real invoices when the
    First Declaration was made. With the computer-generated invoices, there is no
    indication on the printouts that the invoices were issued by Universal or that they
    relate to the goods applied for. Ms. Chiang informed me that the codes used in
    those printouts represented model numbers of trousers sold by the applicant.
    This however is not apparent from the contents of the two declarations. I have
    also checked those codes against the actual samples of trousers submitted as
    Exhibit B to the Second Declaration but have not been able to match any of the
    model numbers found on the samples with those shown on the printouts. These
    printouts are not therefore helpful to the assessment being conducted. I should
    add that even if these materials could have been accepted as examples of use of
    the subject mark, it would have been apparent that they could only have shown
    use on jeans and pants only but not the full spectrum of the goods applied for.


24. Against such background, it is time to have a look at the sales volume of goods
    bearing the subject mark. There is the statement by the applicant in paragraph 7
    of the Second Declaration that the sales reports in Exhibit A of the declaration
    cover all the goods applied for bearing the subject mark for the years of
    2003-2007. This however cannot be verified from the sales reports. In the
    reports, products are again listed out with references to code numbers and there



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    is no way to decipher the kind or type of goods they relate to. It appears from
    the invoices for the manufacture of labels, tags etc. that Universal had been
    trading in products under other brand names. Thus, the question whether such
    figures include sale of goods under other brand names arises. No answer has
    been provided.


25. Not only that, as shown from the analysis above, it is likely that goods bearing
    the subject mark were sold by Universal and then the applicant in markets other
    than Hong Kong. There is no breakdown of the figures provided in the Second
    Declaration for different markets, nor has the deponent made it clear in
    paragraph 7 of the Second Declaration that the figures are in respect of sales in
    Hong Kong only. Furthermore, there is no breakdown of the sales turnover in
    respect of each category of the goods applied for. I need also to take into
    account the fact that only jeans and pants can be found among the actual
    specimens provided and there is not one single item of other type of clothing or
    headgear or footwear shown to have borne the subject mark. In the absence of
    such crucial information, I cannot form a view on the real extent of use that has
    been made of the subject mark in Hong Kong in respect of each type of goods
    applied for.


26. The only remaining items in the exhibits that need to be mentioned are two pages
    which appear to be leaflets or pages from a catalogue. They form part of
    Exhibit A to the First Declaration. The two pages can be taken as
    advertisements showing use of the subject mark on clothing, but there is no
    indication whatsoever of the date of publication or use. There is also no way to
    find out whether the materials had been distributed in Hong Kong prior to the
    date of application. Since there is no way for me to ascertain whether they can
    properly be regarded as evidence to show use of the subject mark prior to the
    date of application, I have no alternative but to disregard them.


27. The onus is on the applicant to show that the public has been educated of the
    trade mark significance of the mark through the use that has been made of it.
    Having examined the evidence in detail, the inevitable conclusion is that the use
    as claimed has not been supported by the evidence as filed. From the evidence
    adduced, I cannot tell if the goods bearing the subject mark had in fact reached
    the relevant consumers in Hong Kong as at the date this application was filed and



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     if so, the extent that it has so reached the relevant customers. It is therefore my
     finding that the applicant fails to show that the subject mark has come to identify
     the products in respect of which registration is applied for as originating from a
     particular undertaking. The attempt of the applicant to rely on section 11(2) of
     the Ordinance is unsuccessful.


Conclusion

28. I have considered all the documents and evidence filed by the applicant together
    with all the oral and written submissions made in respect of the application.
    For the reasons stated above, I find that, in respect of the goods applied for, the
    subject mark is, contrary to section 11(1)(b) and (c) of the Ordinance, devoid of
    any distinctive character and it consists exclusively of signs that may serve, in
    trade or business, to designate the characteristics of such goods. The
    application is accordingly refused under section 42(4)(b) of the Ordinance.




Caroline Chow
for Registrar of Trade Marks
21 December 2009




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Appendix

   Tomboy Chic: It is one of style's great paradoxes that clothes made for men can
   actually make women appear more playful and feminine. The tomboy is a
   classic American icon — fashion designers and style pioneers are constantly
   creating new looks for women by borrowing heavily from classic men's fashions.
   If you've always wanted to try out the tomboy look, take a few pieces of advice
   from a fashion expert.
   (http://www.fineliving.com/fine/favorite_things_essentials/article/0,,FINE_1426_
   1568874,00.html)


   Howies Organic Womens Tomboy Jeans: A boyish cut jean, low waist, wide leg,
   cinch back, fits nicely around the hips, but the leg widens just below the bum for
   a relaxed look
   (http://www.buyorganics.co.uk/organic/howies_Tomboy_Jeans(562).aspx)


   The Tomboy or Tough Girl: As far as your tomboy's appearance, she may get
   just as dirty as boys, or more so, and revel in the process. Often a tomboy prefers
   wearing blue jeans and T-shirts to skirts and dresses, which can be a benefit. Buy
   her the clothes she wants. They are usually easier to take care of than girly outfits,
   may be less costly, and last longer.
   (http://life.familyeducation.com/girls/self-expression/55283.html)


   How to Adjust to Wearing a Bathing Suit as a Tomboy: No item of clothing
   more strongly emphasizes your femininity than a bathing suit. So if you're a
   tomboy, wearing bathing suits can be even more awkward than wearing skirts.
   You have to find a swimsuit that fits your personality.
   (http://www.ehow.com/how_2216425_adjust-wearing-bathing-suit-as.html




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