Registrar finds TOMBOY mark descriptive and indistinctive

The registrar of trademarks recently refused an application to register the word mark TOMBOY in respect of clothing, footwear and headgear in Class 25 of the Nice Classification on the grounds that the mark:

• Consists exclusively of a sign which designates the characteristics of the goods applied for.
• Is devoid of distinctive character.

The registrar held that when used on clothing, footwear and headgear, the mark denotes that the goods are designed for boyish girls or for girls who like to dress in a boyish fashion. The registrar supported this view with an internet search showing that the mark is commonly used by different traders in relation to the applied-for goods. Given the strong descriptiveness of the mark, the registrar further held that without first being informed of its function to indicate the source, consumers would perceive the mark only as a sign that designates the characteristics of the goods and is thus:

• Devoid of any distinctive character.
• Unable to perform its function as a badge of trade origin.

As an alternative to its argument on inherent registrability, the applicant sought to rely on the argument that the mark had acquired a distinctive character through use. However, having examined the use evidence submitted by the applicant (eg, sales invoices, manufacturing invoices and invoices for placing advertisement of the mark), the registrar concluded that they were fraught with unexplained details. It could not tell whether the goods bearing the mark had in fact reached the relevant consumers in Hong Kong and, if so, the extent to which they had reached them. Thus, it was held that the applicant failed to show that the mark had come to identify the applied-for goods as originating from a particular undertaking.