NAKED mark declared registrable for condoms on appeal

The Hong Kong Court of First Instance has overruled the August 2008 decision of the trademarks registrar to refuse registration of the mark NAKED for condoms in Class 10.

Trademark applicant Creative Resources based its appeal on the fact that the registrar had confused the sensation of using a condom with the product’s characteristics. This issue turned on whether a mark directly describes a characteristic of a product or merely indirectly suggests it. In this regard, the Honourable Reyes J affirmed the guidelines provided in P OHIM v WM Wrigley Jr Company (DOUBLEMINT). In essence, the court must use a sliding scale to decide whether a mark designates a characteristic or merely alludes suggestively to it. A decision is reached according to whether: 

• the mark relates to the goods in an objective or imaginative way; 
• the relationship is immediately perceivable; and 
• the designated characteristic is essential to the product or purely incidental.

The court disagreed with the registrar that the mark was descriptive of condoms. "Naked" is not a term conventionally used to modify condoms and bears no direct objective relation to the product. While some desirable attributes of a condom (eg, its sheerness) are linked to the state of nakedness, such a connection requires subjective imagination and is not immediately discernible. In fact, it is a paradox to describe a condom (a form of covering) as being uncovered. Further, it was held that the feeling of nakedness might also arise because of the lightness, comfort or transparency of a condom. The word "naked" suggests different attributes of a condom to different people; therefore, the designated characteristic is arbitrary. For these reasons, the judge held that the mark NAKED fell towards the suggestive end of the sliding scale. Ironically, the internet search results relied on by the registrar in her decision actually reinforced the court’s view, since the term “naked” was used online to describe the experience derived from condoms, not the product itself.

Since the term “naked” is likely to mean different things to different people, the court held that the mark was capable of bearing a distinctive character and identifying the products of a particular undertaking. Thus, the mark could be registered.

The registrar has filed an appeal against the court’s decision.