No sweet result for LG Electronic’s CHOCOLATE application

LG Jeonja Joo-Sik-Hoi-Sa (LG Electronics Inc) sought to register the mark CHOCOLATE in respect of portable communications apparatus in Class 9. Registration was refused on the basis that the mark (i) carried the obvious and ordinary meaning of “a moderate to deep brown colour”, which might serve to describe the colour of the goods applied for; and (ii) was devoid of any distinctive character. LG requested a hearing on the registrability of the mark. As there was no evidence of use, the registrar had only the prima facie case to consider.

During the hearing, LG argued that the mark did not bear an unequivocal meaning of a dark brown colour – it was also commonly used to describe the food or snack. The registrar made it clear that to preclude a mark from registration, it is sufficient if at least one of the mark’s possible meanings designates a characteristic of the goods. The registrar also considered it irrelevant that most consumers in Hong Kong used “brown” or “dark brown” instead of “chocolate” to describe this particular colour, since the criteria of registration do not require that the word in question be the only way of designating the characteristic of the goods. As the mark was capable of designating a colour, it consisted exclusively of a sign that might serve to designate the dark brown colour of the goods applied for. The registrar maintained that the mark was too descriptive for registration.

On the question of distinctiveness, the registrar cited the well-recognised principle that if the word cannot do the job of distinguishing without first educating the public that it is a trademark, then the word should be precluded from registration. In this regard, the registrar was not satisfied that without first being educated, consumers would regard the mark as a guarantee of a particular trade origin; instead, they would perceive the mark, being a direct description of a colour, as an indication that the product was chocolate in colour or that chocolate was one of the available colours. Refusal was thus also maintained on the ground of indistinctiveness.

Despite the fact that the registrar had previously allowed the registrations of ORANGE and RUBY for Class 9 products, he found these marks to be incomparable to the subject mark and stated that the state of register was of little relevance when there were valid grounds for refusal against the subject application.