Nokia's sound mark application refused in part

The Hong Kong Trademark Registry has refused, in part, a trademark application filed by Nokia Corporation to register a sound mark.

Nokia filed on September 1 2004 an application to register a trademark consisting of a sound in Classes 9 and 38 of the Nice Classification. The sound consists of 13 musical notes in four bars. The sound is embodied in Nokia's mobile phones and is played when the phones are switched on. The application was later divided into two divisional applications, one in Class 9 and another in Class 38. The divisional application in Class 9 essentially covering the class heading was rejected by the registry on the grounds that the sound mark was devoid of any distinctive character with respect to the goods applied for. On the other hand, the divisional application in Class 38 covering "telecommunications" only was accepted for registration on a prima facie basis.

Pursuant to Nokia's request, a registrability hearing with respect to the divisional application in Class 9 was held. Nokia argued that the sound mark was inherently distinctive with respect to the goods applied for. Further, Nokia obtained leave and filed evidence of use of the sound mark on the date of the hearing. It averred in its evidence of use that the sound was embodied in all its mobile phones sold in Hong Kong and was the most well-known ringtone in the world. It was further averred that its goods embedded with the sound were advertised and promoted in Hong Kong.

The registry found that the sound mark was not registrable with respect to the goods applied for in Class 9 on the following grounds:

• The sound mark was devoid of any distinctive character with respect to the goods applied for. The registry was not satisfied that consumers would regard the sound as a mark indicating trade origin because, on hearing the sound, consumers would perceive it as indicating only that the goods were functioning or in operation. Further, the registry took the view that consumers would perceive the sound, when played in the course of advertising and promotion, to be background music only rather than an indication of trade origin. Therefore, the registry maintained the refusal against the sound mark with respect to all the goods applied for in Class 9 on a prima facie basis.
  
  
• The evidence of use filed by Nokia did not show that the mark had acquired a factual distinctiveness in Hong Kong. The registry considered that the evidence did not contain information about the date of first use of the sound mark in Hong Kong and the volume of sales of mobile phones in which the sound was embedded. There was also no documentary evidence that substantiated the claim that the goods embedded with the sound had been extensively promoted in Hong Kong. The registry was therefore not persuaded by the evidence filed that the sound mark had become factually distinctive with respect to the applied-for goods in Class 9 in Hong Kong.

In the author's opinion, it is difficult to reconcile the registry's differing approaches to the sound mark with respect to goods in Class 9 and services in Class 38.

Philip Tsang, Lloyd Wise & Co, Hong Kong