Evidence of use no longer defeats objection on grounds of deceptiveness

The registrar of trademarks has clarified that evidence of use of a trademark cannot save it from an objection on the grounds that the mark is likely to deceive the public.

The Hong Kong Trademarks Ordinance sets out a number of absolute grounds for refusing to register a sign as a trademark. These are as follows:

• The mark is devoid of any distinctive character;
  
  
• The mark consists exclusively of signs which may serve, in trade or in business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services;
  
  
• The mark consists exclusively of signs which have become customary in the current language or in the honest and established practice of the trade; and
  
  
• The mark is likely to deceive the public.

The ordinance also expressly provides that a trademark shall not be refused registration by virtue of the first three grounds if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. Nothing is said about the fourth absolute ground, which refers to the mark being inherently likely to deceive the public, as opposed to the mark being likely to cause deception due to the existence of an earlier trademark, which is a relative ground for refusal of registration.

Previously, the approach of the registrar was that there was no reason in principle why an applicant could not overcome such objection by filing evidence to show that, through use, the trademark had acquired a secondary meaning to displace the deceptive meaning of the words in question. However, on September 21 2007 the registrar revised the relevant chapter in the Trademarks Work Manual by deleting the above comment, making it clear that evidence of use of a mark cannot save it from such objection.

Rebecca Lo, Rebecca Lo & Co, Hong Kong