International report - Do you PAYEASE? 26 Sep 12
Wilkinson & Grist - Hong Kong
Following a registrability hearing, the Hong Kong trademarks registrar recently refused registration of the trademark PAYEASE for certain services in Classes 36 and 38. The registrar held that the mark was indistinct and consisted exclusively of a sign that designated the kind, quality, intended purpose or other characteristics of the services applied for.
The registrar allowed the mark to be registered for:
- “Insurance; real estate services; finance” in Class 36.
- “Telecommunications services; providing email services; providing access to telecommunications networks” in Class 38.
- “Transportation; goods packaging; transport and delivery of goods; travel arrangement; travel and tour ticket reservation services etc” in Class 39.
However, the mark was found to be objectionable under Sections 11(1)(b) and 11(1)(c) of the Trademarks Ordinance in relation to:
- “Financial transaction services; electronic payment services” in Class 36.
- “Providing electronic and optical transmission of financial transaction and payment data via a global computer network etc” in Class 38.
The registrar was of the view that although the subject mark appeared as one word, it was simply a combination of two English words, “pay” and “ease”. To be precluded from registration under Section 11(1)(c) of the ordinance for being a mark which consists exclusively of a sign which may serve to designate the characteristics of the objectionable services:
“a mark does not have to be the normal way of describing the services in question. It is sufficient if the mark could be used for such a purpose. The mark is thus objectionable if at least one of its possible meanings designates a characteristic of the services in question.”
The registrar also did not find the combination of “pay” and “ease” to be unusual or unique: the “putting together of these two words is in compliance with the rules of grammar and syntax”. He stated that: “The word 'pay' can be regarded as a noun that qualifies the meaning of 'EASE', and that “There is no perceptible difference between the subject mark itself and the mere sum of its parts. The literal meaning of the phrase formed by putting the two words together to become the subject mark is clear in that” it conveys the meaning of easy payment.
As for Section 11(1)(b) of the ordinance, the question is whether perceptions and the recollections that the subject mark would trigger in the mind of the average consumer of the services applied for would be origin specific or origin neutral. It was decided that:
“being a term which is equally applicable to other traders for promoting similar services and other than signification of characteristics, it does not enable the relevant consumers to distinguish, in the absence of prior knowledge and without first being educated, such services from those of a different commercial origin.”
The message conveyed by the mark in the context of the objectionable services was considered “origin neutral”. As the mark was devoid of distinctive character, it was precluded from registration in respect of the services applied for under Section 11(1)(b) of the ordinance.
Therefore, the registrar allowed registration of the mark only for the non-objectionable services which were unrelated to financial payment services.
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