LG fails to register CHOCOLATE for mobile phones

The registrar of trademarks has refused an application to register the trademark CHOCOLATE for portable communication apparatus (January 25 2008).

LG Jeonja Joo-Sik-Hoi-Sa (LG Electronics Inc) sought to register the mark CHOCOLATE in respect of portable communication apparatus in Class 9 of the Nice Classification (Application 300618895). Objections were raised at the examination stage and LG requested a hearing on the registrability of the mark. As no evidence of use of the mark had been filed, the registrar considered only the prima facie case.

The registrar rejected the application on the grounds that the mark:

• carried the obvious and ordinary meaning of "a moderate to deep brown colour" which might serve to describe the colour of the goods applied for; and
  
  
• was devoid of any distinctive character.

At the hearing, LG argued that the mark did not have the unequivocal meaning of a dark brown colour; it was also commonly used to describe food or snacks. The registrar highlighted the fact that a mark will be refused registration if at least one of its possible meanings designates a characteristic of the goods. According to the registrar, it was irrelevant that the average consumers in Hong Kong used the words 'brown' and 'dark brown' instead of 'chocolate' to describe the colour in question, since the criteria for registration do not require that the word in question be the only way of designating the characteristic of the goods. Therefore, as the mark CHOCOLATE is capable of designating a colour, the registrar concluded that it consists exclusively of a sign which may serve to designate the colour of the goods applied for. The registrar thus held that the mark was descriptive.

With regard to distinctiveness, the registrar cited the recognized principle that a sign should be precluded from registration if it cannot distinguish the source of the goods without the public first being educated that it is a trademark (see British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281). In this regard, the registrar was not satisfied that the consumers would regard the mark as a badge of origin and would instead perceive it as an indication that the product is of a chocolate colour, or that chocolate is one of the available colours. The registrar thus found that the mark lacked distinctive character.

Finally, the registrar held that the fact that the marks ORANGE and RUBY had been registered for Class 9 goods was irrelevant. The registrar held that these marks were not comparable to the mark at issue and that the state of the register is of little relevance when there are valid grounds for refusal of an application.

Mena Lo and Emma Tsang, Wilkinson & Grist, Hong Kong