International report - RICE PAPER too descriptive for paper-related and food products 01 Aug 12
Wilkinson & Grist - Hong Kong
Maxim’s Caterers Limited filed an application to register the word mark RICE PAPER in Classes 16, 30 and 35 in Hong Kong. The registrar of trademarks ruled the mark registrable subject to the exclusion of objectionable goods and services in Classes 16, 30 and 35.
Objections had been raised at the examination stage under Sections 11(1)(b) and (c) (absolute grounds of refusal) of the Trademark Ordinance. The registrar maintained the objections against Maxim’s application that the mark consisted exclusively of a sign which designated the characteristics of the goods and services and was devoid of distinctive character. Maxim's requested a hearing on registrability.
The registrar held that while the mark was acceptable for registration for a number of designated goods and services under the respective classes (eg, “plastic materials for packaging” in Class 16, “coffee” in Class 30 and “business management” in Class 35), the issue was whether the mark should be debarred from registration for goods and services including “papers, cardboard for packaging” in Class 16, “Chinese and Western-style cakes” in Class 30 and “retail and distribution services” in Class 35.
Descriptive to goods and services
Applying Koninklijke KPN Nederland NV v Benelux-Merkenbureau, the registrar held that a mark does not have to use the normal way of describing the goods in question - it is sufficient that the mark could be used for such purpose. When used for ordinary paper-related products, food products and retail and distribution services for food products, the direct and obvious meaning that the mark RICE PAPER would convey to the relevant consumers would be the impression of the characteristics of the objectionable goods and services. Accordingly, the mark was descriptive of those goods and services and was debarred from registration under Section 11(1)(c) of the ordinance.
Lack of distinctiveness
The registrar found that rice paper (ie, a thin sheet made from rice) is commonly used in Asian cuisine and there was no inherent distinctiveness in the term. Furthermore, there was insufficient evidence to prove that the mark had acquired distinctiveness through use or that the relevant consumer had been educated as to its distinctiveness. There was also no evidence regarding use of the mark in respect of the objectionable goods or services. Therefore, it was held that the mark had failed to acquire enough distinctiveness to be identified by the relevant consumers as an indication of origin. Accordingly, the mark was debarred from registration in respect of the objectionable goods and services under Section 11(1)(b) of the ordinance.
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