NAKED mark not registrable for condoms

Creative Resources LLC sought to register the mark NAKED for condoms in Class 10. Registration was refused on the grounds that the mark: 

• consisted exclusively of a sign that could serve to designate the characteristics of the goods; and 
• was devoid of any distinctive character.

Creative Resources requested a hearing on the registrability of the mark; however, it filed no evidence of use and the registrar had only the prima facie case to consider.

Creative Resources argued that the term “naked” was merely suggestive of and did not describe condoms or the sensation experienced by their users. The registrar rejected this submission and contended that “naked” conveyed an immediate message that users would feel naked or near-naked when using the goods. Although “naked” was not a term commonly used in relation to condoms, the registrar held that in order to be descriptive, a sign need not be commonly used in relation to the relevant trade, and considered it irrelevant that there were other more commonly used signs to describe the same characteristics. It was sufficient that one of the possible meanings of the mark could be used for descriptive purposes. As the mark consisted of the word “naked” in plain block letters with no other added elements or stylisation, the mark could not be registered because it was descriptive.

Further, the registrar considered that consumers would be likely to perceive the mark as merely describing a characteristic of the goods rather than as a badge of origin. As the mark was origin neutral, unless Creative Resources first educated consumers that the term “naked” was used as a trademark, they would be unlikely to rely on the mark to distinguish the goods of Creative Resources from those of other undertakings. Thus, the registrar upheld the refusal based on the lack of distinctiveness.

Despite the fact that the registrar had previously allowed the registrations of marks such as TOGETHER, ROMANTIC, PRIVATE PLEASURES, EXPRESS and PRIVATE for condoms, in this case the registrar made it clear that existing registrations are of little relevance where there are valid grounds for refusal of an application. The registrar also refused to follow foreign decisions that allowed registration of NAKED for condoms in other jurisdictions on the grounds that trademark registration was territorial.