Registrar declares shoe device unregistrable for footwear

The registrar of trademarks has refused an application to register the device mark shown below in respect of "shoes, boots etc" in Class 25 on the basis that the mark:

• Is devoid of distinctive character (Section 11(1)(b) of the Trademarks Ordinance.
• Consists exclusively of a sign which designates the characteristics of the goods applied for (Section 11(1)(c) of the ordinance). 

The registrar held that the shoe device is a two-dimensional representation of a shoe with a cloud of air spurting out from the sole. It showed merely that air can pass through the sole, and hence it designated the characteristic of the shoes and footwear applied for. The perception is direct and immediate. Therefore, the mark failed under Section 11(1)(c) of the ordinance.

The mark also lacked distinctive character since the natural instinctive impression that a consumer will receive on seeing the mark is that the shoe is air permeable, but he or she would not associate the mark with a particular source.

The applicant also sought to file evidence to prove acquired distinctiveness of the mark through use. However, since the evidence showed use of different versions of the breathing shoe design by the applicant, the registrar held that consumers would think of the representations only as indicative of the styles or designs of the applicant's products, with them all having high air permeability quality. The evidence failed to educate the relevant consumers adequately of the function of the mark to distinguish the goods and services of one undertaking from those of other undertakings. On that note, the registrar referred to the chapter of the Trademarks Work Manual on "Absolute grounds of refusal", which states under Section 11(2) on acquired distinctiveness through use that:

"An application for a different typeface to that actually used needs to be considered carefully. Would the variant qualify as a series? If not, the use would not qualify as establishing factual distinctiveness."

The registrar also seems to have suggested that where different versions of a mark are used, the sales figures and advertising expenditure supplied as evidence should be separated to reflect the sales and advertising expenditure corresponding to the different marks, and not just to shoes as a whole.