LASERJET held to have acquired distinctiveness through use
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In Hewlett-Packard Company v Department of Intellectual Property (Case 3685/2551, November 17 2008), the Supreme Court has held that the trademark LASERJET had acquired distinctiveness through use and was thus registrable under Section 7(3) of the Trademark Act.
In 2001 Hewlett-Packard Company (HP) filed an application for the registration of the mark LASERJET with the Department of Intellectual Property for “toner cartridges for photocopiers and printers” in Class 2 of the Nice Classification (Application 464131). The registrar and the Board of Trademarks rejected the application on the grounds that the mark means “to spout liquid” and thus refers directly to a characteristic of the goods.
HP filed a civil suit against the Department of Intellectual Property with the Intellectual Property & International Trade (IP & IT) Court. HP claimed that the trademark LASERJET is inherently distinctive because the mark consists of a fanciful and unusual combination of words. In addition, HP provided evidence that the mark had been widely used in Thailand and argued that it had thus achieved distinctiveness through use. Over 30 boxes of documentary evidence (eg, samples and advertising materials) were presented to the court during the trial to support HP's argument. Over 20 boxes of invoices and other sales documents were submitted to the court to demonstrate the sales figures of the goods. HP also relied on computer dictionaries which referred to the LASERJET mark.
On August 31 2004 the IP & IT Court held that LASERJET was sufficiently distinctive and was thus registrable for goods in Class 2. The court considered that although the trademark LASERJET could convey the meaning of “spouting liquid”, this was not the “exclusive meaning” of the mark. The Department of Intellectual Property appealed to the Supreme Court.
The Supreme Court confirmed that the trademark LASERJET was registrable, but took a different approach in reaching this conclusion. Instead of finding, like the IP & IT Court, that the mark was inherently distinctive, the Supreme Court considered that LASERJET was in fact non-distinctive, as it means “to spout liquid”. However, the court considered the issue of whether the trademark had acquired distinctiveness through use.
The court reviewed the evidence submitted by HP regarding the use of the LASERJET mark in Thailand, as well as the computer dictionaries relied on by HP. The dictionaries recognized that LASERJET is a trademark used by HP for printers. For example, Prentice Hall’s Illustrated Dictionary of Computing (Second Edition) states that 'HP LaserJet' is:
“a trademark of Hewlett-Packard, assigned to its range of laser printers, first introduced in 1984 with one built-in font (courier) offering a resolution of 300 dots per inch.”
Hence, the Supreme Court found that HP had widely used the trademark LASERJET for printers and toner cartridges for a substantial period of time. Therefore, LASERJET had acquired distinctive character through use under Section 7(3) of the act. The Supreme Court thus ordered that the Department of Intellectual Property proceed with the registration of the mark.
Nuttaphol Arammuang, Tilleke & Gibbins International Ltd, Bangkok
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