MTV fails distinctiveness test

The registrar of trademarks has refused registration of the mark MTV, considering it to be descriptive and devoid of distinctive character (Applications 300111662AA and 300147915, March 17 2007). Although evidence of use was submitted, the applicant, Viacom International Inc, failed to demonstrate that the mark had acquired distinctive character in respect of the goods and services in question.

Registration was sought in relation to goods including:

• "goods for storing, recording, transmitting and reproducing sound and/or images and DVDs featuring concerts" in Class 9 of the Nice Classification;
  
  
• "communication services related to the transmission of sound and images" in Class 38; and
  
  
• "music shows, entertainment and television production services" in Class 41.
  

The registrar considered that the letters 'MTV' could stand for 'music television', which designated a characteristic of the goods and services applied for, although the letters had the alternative dictionary meaning of 'a music television channel in the United States'. The registrar thus rejected the mark, following the principle set out by the European Court of Justice in Office for Harmonization in the Internal Market v Wm Wrigley Jr Company that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services in question.

The registrar considered that the mark would be applied to products, packaging, programmes and performances, and advertisements for them, as well as materials and websites for promoting goods and services. The relevant customers included members of the general public seeking the relevant products and services. Therefore, the registrar held that the overall impression of the mark on the average consumer was likely to be connected with music television programmes or performances, and that the average consumer was unlikely to perceive the mark as an indication of trade origin. Therefore, the mark was held to be devoid of distinctive character.

In determining whether the mark had acquired sufficient distinctiveness through use before the application was filed, the registrar looked for evidence of how the mark had been presented to the relevant customers. Viacom claimed to have provided television programming services relating to music and entertainment on the MTV Mandarin and MTV Asia television channels, which it launched in Hong Kong in 1995. Furthermore, it submitted copy agreements relating to the purchase of broadcast time from a local television station for its television programmes, together with copy distribution contracts for the provision of programming services to or through a local television station. Evidence was produced showing licences granted by Viacom of trade names and logos (eg, MTV: MUSIC TELEVISION, MTV FANTASTIC FEMALES and MTV NON-STOP HITS) to music companies in relation to sound recordings.

Nevertheless, the registrar considered that there was insufficient evidence to show:

• which programmes had been broadcast to consumers;
  
  
• the extent of the advertising of the programming services pursuant to the agreements and contracts; and
  
  
• whether the mark had been used in the form applied for to identify the services concerned as originating from a particular undertaking.
  

The evidence filed showed that the stylized forms of trade names and logos had been used in relation to television programming services. However, the use of such forms, which were not the form applied for, was held to be irrelevant with regard to establishing the mark's distinctive character. Therefore, the registrar considered that insufficient evidence had been produced to show that the mark had acquired distinctive character through use. The fact that the subject mark had been accepted for registration in other jurisdictions, including the United States, Japan, Australia, Singapore and Europe, the reasons for acceptance being unknown to the registrar, and that marks such as BBC, ATV and CNN are registered in Hong Kong, did not assist the application, as each case must be considered on its merits.

Mena Lo and Thomas Chan, Wilkinson & Grist, Hong Kong