Hong Kong Case Law: Decisions & Judgments

Topic

Descriptiveness

Legal area

Court

21 Jan 2010

NISSHA PRINTING CO., LTD. (NIHON SHASHIN INSATSU KABUSHIKI KAISHA) v. REGISTRAR OF TRADE MARKS

Citation

NISSHA PRINTING CO., LTD. (NIHON SHASHIN INSATSU KABUSHIKI KAISHA) v. REGISTRAR OF TRADE MARKS
Court

Court of First Instance
Case number

HCMP720/2009

The court upheld the hearing officer's finding that 'Touch Window', taken as a whole in relation to the specified Class 9 and 17 goods, is descriptive of a window display with touch input facility and therefore falls within section 11(1)(c); it is also devoid of inherent distinctiveness under section 11(1)(b); no error of principle was shown and the appeal is dismissed.
15 Dec 2009

RE CREATIVE RESOURCES LLC

Citation

RE CREATIVE RESOURCES LLC
Court

Court of Appeal
Case number

CACV15/2009

The Court held that the hearing officer correctly found that the mark 'NAKED' conveys an immediate message that the condoms give a 'naked' feeling and therefore consists exclusively of a sign designating a characteristic of the goods under s11(1)(c) and is devoid of distinctive character under s11(1)(b); the hearing officer's exercise of discretion was properly exercised and deserved deference, so the refusal to register was upheld.
12 Jun 2009

RE ALLDRESSEDUP INTERNATIONAL PTE LTD

Citation

RE ALLDRESSEDUP INTERNATIONAL PTE LTD
Court

Court of First Instance
Case number

HCMP93/2009

The mark 'alldressedup' is not distinctive and is generally descriptive of clothing and related goods in Classes 14, 18 and 25; simply joining common descriptive words without any unusual variation in syntax or meaning does not transform the sign into a registrable trademark under s.11(1)(b) and (c), and no evidence of acquired distinctiveness was produced.
9 Jan 2009

RE CREATIVE RESOURCES LLC

Citation

RE CREATIVE RESOURCES LLC
Court

Court of First Instance
Case number

HCMP1607/2008

The court held that NAKED, when applied to condoms, does not directly describe an objective characteristic but is at best suggestive or evocative requiring imaginative inference; therefore it does not fall within TMO s.11(1)(c) and is capable of possessing distinctive character under s.11(1)(b); the Registrar's refusal was unjustified and the appeal was allowed.
4 May 2006

AQUA-LEISURE INDUSTRIES, INC. AND ANOTHER v. IMPAG TOYS EUROPE BV AND OTHERS

Citation

AQUA-LEISURE INDUSTRIES, INC. AND ANOTHER v. IMPAG TOYS EUROPE BV AND OTHERS
Court

Court of First Instance
Case number

HCA3933/2000

The court held that the word 'aqua' is descriptive of water-related goods and was not inherently adapted to distinguish the plaintiffs' goods; factual distinctiveness was insufficient to overcome the lack of inherent distinctiveness; therefore registrations were entered without sufficient cause under s.9 and should be varied to require a disclaimer of the word 'aqua'. The plaintiffs failed to prove misrepresentation or likelihood of deception by the 6th defendant and the passing off claim failed. Judgment entered for defendants; counterclaim granted in part to vary registrations to require di…
6 Aug 1999

TIGER ELECTRONICS LTD v. DAIDAIXING ELECTRONICS INTERNATIONAL CO LTD

Citation

TIGER ELECTRONICS LTD v. DAIDAIXING ELECTRONICS INTERNATIONAL CO LTD
Court

Court of First Instance
Case number

HCA8219/1999

On an interlocutory Order 14 test the court found there were arguable triable issues: it was arguable that "Furby" was not an invented word (being perceived as 'fur' plus a suffix) and arguable that it was descriptive of furry toys; accordingly summary judgment was refused and the defendant was granted unconditional leave to defend.

Hong Kong Case Law

NISSHA PRINTING CO., LTD. (NIHON SHASHIN INSATSU KABUSHIKI KAISHA) v. REGISTRAR OF TRADE MARKS

RE CREATIVE RESOURCES LLC

RE ALLDRESSEDUP INTERNATIONAL PTE LTD

RE CREATIVE RESOURCES LLC

AQUA-LEISURE INDUSTRIES, INC. AND ANOTHER v. IMPAG TOYS EUROPE BV AND OTHERS

TIGER ELECTRONICS LTD v. DAIDAIXING ELECTRONICS INTERNATIONAL CO LTD