Registrar unimpressed by LIFE-CHANGING MEDIA

The registrar of trademarks has upheld an objection to the registration of the trademark LIFE-CHANGING MEDIA on the grounds that the mark lacked distinctive character (September 13 2007).

Masterwork Global Limited sought to register the marks LIFE-CHANGING MEDIA and LIFE CHANGING MEDIA in connection with various services in Classes 35 to 38, 41 and 45 of the Nice Classification (including mass media services, the general communication or dissemination of information, and retail and wholesale services).

During examination, an objection was raised under Section 11(1)(b) of the Trademarks Ordinance that the mark lacked distinctiveness. Masterwork called for a hearing to argue the issue of registrability. However, it filed no evidence of use and the registrar considered the registrability of the mark on a prima facie basis.

Masterwork argued that:

• the mark as a whole had a fanciful and totally arbitrary appearance when applied to the services in question, even though the individual elements might not be distinctive;
  
  
• the originality of the mark, which had been created by the applicant and had not been used by others in connection with the services applied for in Hong Kong, gave the mark distinctive character;
  
  
• the mark was at most suggestive, but not directly indicative, of the quality or characteristics of the services or the results which users might expect;
  
  
• a limited degree of distinctiveness is sufficient to satisfy the requirement for registration and the mark had attained this minimum level; and
  
  
• the registrar should take into account the registration of other marks containing the word 'media', including MEDIA FACTORY, GENERIC MEDIA and NOW MEDIA, which had been accepted for registration without additional stylization or devices.

After considering the submissions from Masterwork and the relevant authorities, the registrar rejected the application on the following grounds:

• As laid down in British Sugar Plc v James Robertson and Sons Ltd ([1996] RPC 281) and Nestle SA Trademark Application (HAVE A BREAK) ([2004] FSR 2), a decision on distinctiveness must have regard to the services applied for and the perception of an average consumer who is reasonably well informed and reasonably observant and circumspect, assuming a notional and fair use of the mark in respect of the services applied for.
  
  
• The question is whether the mark can serve to indicate the origin of the services offered and distinguish them from those of other traders.
  
  
• The words in the mark - namely 'life-changing', 'life', 'changing' and 'media' - are common dictionary words with descriptive meanings. The mark as a whole refers to any kind of means, agency or channel of communication, diffusion of news or information with the effect or intention of bringing about changes to life.
  
  
• If the mark were to be used for services related to mass media (eg, radio advertising or broadcasting, radio and television programme production and recording studio services), it would likely be perceived as an indication that the services have a life-changing effect.
  
  
• A similar perception would be likely if the mark were to be used for services relating to general communication or the dissemination of information, including:
  
  
  • the provision of advertising and promotional information through a global computer network;
    
    
  • the dissemination of educational information in books or on compact discs; and
    
    
  • the provision of information and advisory services relating to religious matters.
    
    
• On first impression, the relevant consumers would be unlikely to perceive the mark as an indicator of origin and would be unable to distinguish the applicant's services from those of other traders because the descriptive words in the mark are liable to be used by other traders to promote their services.
  
  
• The mark, which is merely the sum of its individual descriptive components, is not a fanciful or distinctive combination. The fact that an applicant has created a mark and used it exclusively in trade does not automatically render the mark distinctive.
  
  
• Distinctiveness must be assessed in relation to the services applied for, not in a vacuum. The mark is clearly descriptive of the life-changing effects of the services in question and fails to serve as a badge of origin in the eyes of consumers.
  
  
• The registration of other marks is irrelevant, as each case must be decided on its own facts and merits.

Mena Lo and Grace Wong, Wilkinson & Grist, Hong Kong