Combination of two English words held to lack distinctiveness
Following a registrability hearing, the Hong Kong Trademarks Registrar has issued a decision refusing registration of the trademark PAYEASE for certain services in Classes 36 and 38 of the Nice Classification on the grounds that:
- it lacked distinctiveness; and
- it consisted exclusively of a sign that designates the kind, quality, intended purpose or other characteristics of the services applied for.
Whilst the registrar allowed the mark to be registered for “insurance; real estate services; finance” in Class 36, “telecommunication services; providing email services; providing access to telecommunication networks” in Class 38 and “transportation; goods packaging; transport and delivery of goods; travel arrangement; travel and tour ticket reservation services etc” in Class 39, as applied, the mark was found to be objectionable under Sections 11(1)(b) and (c) of the Trademarks Ordinance in relation to “financial transaction services; electronic payment services” in Class 36, and “providing electronic and optical transmission of financial transaction and payment data via a global computer network etc” in Class 38.
The registrar was of the view that, although the subject mark appeared as one word, it was simply a combination of two English words, 'pay' and 'ease'. To be precluded from registration under Section 11(1)(c) of the ordinance for being a mark which consists exclusively of a sign which may serve to designate the characteristics of the services:
“a mark does not have to be the normal way of describing the services in question. It is sufficient if the mark could be used for such a purpose. The mark is thus objectionable if at least one of its possible meanings designates a characteristic of the services in question."
In addition, the registrar did not find that the combination of 'pay' and 'ease' was unusual or unique. The registrar held that the "putting together of these two words is in compliance with the rules of grammar and syntax". The registrar further found that “the word 'pay' can be regarded as a noun that qualifies the meaning of 'ease'". The registrar added that:
"there is no perceptible difference between the subject mark itself and the mere sum of its parts. The literal meaning of the phrase formed by putting the two words together to become the subject mark is clear [in that it conveys the meaning of easy payment]".
As for Section 11(1)(b) of the ordinance, the question was whether the perception and recollection that the subject mark would trigger in the mind of the average consumer of the services applied for would be origin-specific or origin-neutral. It was decided that:
"being a term which is equally applicable to other traders for promoting similar services and other than the signification of characteristics, it does not enable the relevant consumers to distinguish, in the absence of prior knowledge and without first being educated, such services from those of a different commercial origin."
The message conveyed by the mark in the context of the objectionable services was considered to be "origin-neutral". As the mark was devoid of distinctive character, it was precluded from registration in respect of the services applied for under Section 11(1)(b) of the ordinance.
The mark was therefore allowed to be registered only for the non-objectionable services which were not related to financial payment services.
Helen Tang, Wilkinson & Grist, Hong Kong
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