"iFood" denied registration for health and nutrition-related products

Following a hearing in September 2010, the Hong Kong registrar of trademarks refused registration of a series mark for "iFood" and "IFOOD" filed in relation to "health food products, dietary supplements, nutritional drinks and beverages" and food and drink of similar nature in Classes 5, 29, 30 and 32 on absolute grounds under Sections 11(1)(b) and (c) of the Trademarks Ordinance. The grounds for rejection were as follows:

• The mark was devoid of any distinctive character in respect of the goods applied for (Section 11(1)(b)).
• The mark consisted exclusively of signs which may serve, in trade or business, to designate the characteristics of the applied-for goods (Section (1)(c)).

Since no evidence of use was filed, the registrar had to consider only the registrability of the mark on a prima facie basis.

Although it was argued that "i" can represent many words other than "Internet", and that the mark did not convey the meaning of "food products provided or traded via the Internet", the registrar held that a mark need not inform consumers as to what the relevant goods or services are. It is sufficient if the mark can be used for the purpose of designating the characteristics of the goods and services, including the kind and intended purpose of the goods and services. A mark is objectionable if one of its possible meanings designates a characteristic of the goods and services in question. This is consistent with the words "may serve" used in Section 11(1)(c) of the ordinance.

The registrar also held that it was clear that "i" represented "Internet". When consumers saw the mark, it told them that the goods were food products traded or available for sale online. The descriptive message of the mark was clear and direct, and was immediately perceived by the relevant consumers without further thought.

The mark also failed under Section 11(1)(b) of the ordinance, since it gave the relevant consumers the overall impression of being a descriptive designation, indicating the characteristics of the applied-for goods. The combination of "i" and "food" did not introduce an unusual variation or create an impression that was sufficiently removed from the combination of meaning lent by each of its elements. The mark was nothing more than the mere sum of its parts, "i" and "food". It did not have the minimum degree of distinctive character required for it to indicate to consumers the commercial origin of the applied-for goods.

For the reasons stated above, the application was refused registration.