Mark for back pain device held to convey laudatory promotional message

Hong Kong
The trademark registrar has refused an application by Back In Five LLC to register the mark BACK2LIFE for a “device for preventing or relieving pain in the lower back, namely, equipment for movement and stretching of the lower back for medical and/or therapeutic purposes” in Class 10 of the Nice Classification for being devoid of distinctive character.

Consisting of the common English words 'back' and 'life', which have an obvious meaning, and the numeral '2' as an abbreviation of the word 'to', the mark BACK2LIFE carries the meaning of returning to a normal state and condition of living. In relation to the applied-for medical or therapeutic equipment for preventing or relieving pain in the lower back, the mark would not be regarded as an indicator of trade origin, as it simply conveyed a laudatory promotional message to relevant consumers (ie, users of this equipment and professionals of the medical and healthcare sector in Hong Kong) that the goods can help users suffering from back pain to return to normal life by having a better state of wellness and health.

The registrar rejected the applicant’s argument that consumers would not immediately recognise the mark as a common and customary advertising slogan with respect to the goods, as the mark was not immediately perceived to have any descriptive reference to the goods, or as an advertising hyperbole. In the registrar’s view, the term 'Back2Life' would immediately be understood to project the desirable effects and consequences brought by the goods by evoking the aspiration of speeding recovery. In addition, as the online examples provided during the examination stage showed how other traders used the phrase 'back to life' in relation to the relief of back pain, the mark would not immediately be perceived to indicate commercial origin.

The applicant unsuccessfully challenged the online examples on the basis that the findings were insignificant regarding the number of searches conducted and were aimed at markets outside Hong Kong. According to the registrar, the test of distinctiveness was not whether the phrase 'back to life' was commonly used by other traders, but rather how the mark was perceived by the relevant consumers. The websites illustrated how the expression was used in the relevant trade to convey the message that a patient could return to a normal state and condition of living. Therefore, the mark would be readily understood by relevant consumers as merely a promotional slogan.

The applicant’s argument that the use of the numeral '2' in place of the word 'to' served to indicate that the mark functioned as a badge of origin rather than mere advertising hype, particularly as '2' was intended to refer to the second version of the applicant’s products, was rejected. It was the perception of the relevant consumers, not the intention of the applicant, that was important and, looking at the mark as a whole, the message conveyed to the relevant public was an origin-neutral expression that signified that the goods bearing the mark helped users to return to normal health and wellness, and nothing more.

In considering the distinctiveness of the mark, the registrar referred to the principles of distinctiveness as set out in British Sugar Plc v James Robertson and Sons Ltd ([1996] RPC 281)) and Société des Produits Nestlé SA v Mars Ltd ([2004] FSR 2), as considered in Host Hotels & Resorts LP v Registrar of Trademarks ([2010] 1HKLRD 541).

Lily Cheung, Wilkinson & Grist, Hong Kong

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