CAT'S CLAW trademark scratched from the record

The Hong Kong registrar of trademarks has declared the trademark CAT'S CLAW UÑA DE GATO 金貓爪 invalid on the grounds that it was devoid of distinctive character and consisted exclusively of signs which served to designate the nature, quality or characteristics of the goods.

Although some might assume that the goods in question are for cats, the mark was registered for use in connection with natural drugs: cat's claw and uña de gato are the common English and Spanish names for uncaria tomentosa, a plant which originates in South America and has long been used by indigenous peoples for a variety of health purposes.

The invalidity action was brought by the General Nutrition Investment Company (GNIC), a subsidiary of General Nutrition Centres Inc (GNC), and was unopposed. GNIC stated in its evidence that GNC had begun manufacturing and selling herbal supplements containing cat's claw in about 1990 and such supplements had been sold in Hong Kong since 2003. The labels on the containers of GNC's cat's claw products showed the words 'cat's claw' prominently to describe the specification of the contents, just as the word 'ginger' would be used to describe products in which ginger was the main ingredient.

GNIC's evidence also referred to a number of publications in which the terms 'cat's claw' and 'uña de gato' were used as common names for the herb. GNIC further showed that another manufacturer of cat's claw products used the common English name to describe its products.

The registrar first considered whether the trademark consisted exclusively of signs which may serve to designate the nature, quality or other characteristics of the goods under Section 11(1)(c) of the Trademarks Ordinance.

Although there was no evidence of descriptive use of the English or Spanish names in Hong Kong before the date of application for registration (ie, August 7 1999), the registrar considered that this did not necessarily affect GNIC's case. Under Section 11(1)(c) it is sufficient that a sign may serve to designate the nature or other characteristics of the goods; the fact that there are alternative names does not affect the issue. Despite the fact that there was no evidence to show use of the Chinese characters '貓爪' (meaning 'cat's claw') as the name of the herb at the date of application for registration, the registrar stated that such words would likely serve to designate the goods, as the use of cat's claw as a medicinal herb outside South America is fairly recent. It was reasonable to assume that the herb was not used in traditional Chinese remedies, and that the herb would not have acquired a Chinese name which was independent of its name in English as a result of any use in China or Hong Kong.

The additional Chinese character '金' (meaning 'gold') before 貓爪 and the use of a dark, square background could not save the mark. The registrar found that 金 simply described the colour of the herb; alternatively, it might indicate goods of superior quality. The use of the background did not alter the fact that the mark consisted of only three terms - namely, 'cat's claw', 'uña de gato' and '金貓爪'. Therefore, the registrar held that the mark consisted of signs which, considered at the date of the application for registration, might have served to designate the nature or other characteristics of the goods.

For the same reasons, the registrar considered that:

• the mark consisted exclusively of signs that might serve to designate the goods;
  
  
• it did not serve to identify the goods as originating from the owner; and
  
  
• it was therefore devoid of distinctive character and invalid under Section 11(1)(b).

GNIC originally asked that the mark be declared invalid on two further grounds - namely, that the mark was not a sign capable of distinguishing the goods (Section 11(1)(a)), and that it consisted exclusively of signs which had become customary in current language or in the trade (Section 11(1)(d)). There was no need to consider such grounds, as the registrar decided to invalidate the mark based on the provisions of Sections 11(1)(b) and 11(1)(c). However, she remarked that, when considering whether a trademark has become customary in current language or in the practices of the trade, the position at the date of application for registration of the mark is to be assessed. The generic terms must be in current use, as opposed to being capable of use in the future. The applicant's evidence in the present case did not show actual use of the characters '金貓爪'; had it relied on such grounds alone, the outcome might have been different.

Esther Ho, Wilkinson & Grist, Hong Kong