NAKED decision overturned on appeal

Hong Kong
The Hong Kong Court of Appeal has overturned a decision of the High Court and upheld a decision of the registrar of trademarks in which the latter had refused to register the trademark NAKED for condoms (Case 15/2009, December 15 2009).

Creative Resources LLC sought to register the trademark NAKED for condoms in Class 10 of the Nice Classification. The registrar of trademarks refused registration on the grounds that:

  • the mark consisted exclusively of a sign which may serve in trade or business to designate the characteristics of the goods under Section 11(1)(c)) of the Trademarks Ordinance; and
  • the mark was devoid of any distinctive character under Section 11(1)(b) (for further details please see "NAKED not registrable for condoms").
The High Court overturned the registrar's decision, holding, among other things, that: 
  • the word 'naked' did not bear any direct relation to condoms; and
  • the link, if any, between the state of nakedness and the characteristics of a condom was not immediately discernible (for further details please see "Registration of NAKED for condoms allowed on appeal").
On further appeal, the Court of Appeal commented on the discretion of the registrar. It concluded that the registrar’s opinion is to be considered fully and carefully, as the registrar has particular experience in the field of trademarks. Therefore, a court should not overrule the decision of the registrar simply because it has reached a different conclusion.
Although both the registrar and the first instance court focused on Section 11(1)(c), the Court of Appeal first considered the position under Section 11(1)(b), referring to the test set forth by the High Court of England and Wales in British Sugar Plc v James Robertson & Sons Ltd ([1996] RPC 281). 
The Court of Appeal held that the registrar had applied the correct tests and that the reasons for reaching her decision were sound. Moreover, it found that the first instance court had failed to consider the reasons expressed by the registrar and had thus interfered with her discretion with no sound basis for doing so.   
Sandra Gibbons and Philip Tsang, Marks & Clerk Hong Kong Incorporating Lloyd Wise, Hong Kong

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