SAVE THE CHILDREN given no charity by registrar
The registrar of trademarks has refused an application to register the mark SAVE THE CHILDREN for a variety of goods and services (Application 300196434AB, July 13 2007).
On April 15 2004 the applicant, International Save the Children Alliance (ISCA), applied to register the mark in connection with a variety of goods and services, including:
- audio cassette tapes, DVDs and compact discs (Class 9 of the Nice Classification);
- printed matter, newsletters and raffle tickets (Class 16);
- advertising and promotional services relating to national and international relief of distress and hardship (Class 35);
- charitable fundraising and support services relating to the promotion of the welfare of children and humanitarian aid and development (Class 36);
- education and training relating to the promotion of the welfare of children and humanitarian aid and development (Class 41);
- brand licensing services (Class 42);
- services for providing food, drink and temporary accommodation (Class 43);
- medical and veterinary services (Class 44); and
- all forms of service in connection with international humanitarian aid and development, and all forms of service for advancing the rights of children in accordance with the United Nations Declaration on the Rights of the Child (Class 45).
Initially, ISCA also applied to register the mark for other goods in Classes 6, 21, 24 and 26 in the same application, but these goods were divided by the applicant into a separate application and this request for registration was granted.
At the examination stage, the registrar refused to grant registration for all goods and services in Classes 9, 16, 35, 36 and 41 to 45 on the grounds that the mark lacked distinctive character. In an attempt to have this refusal overturned, ISCA called for a hearing to advance its arguments and file evidence of use of the mark. It argued that:
- the mark had no direct meaning in relation to the goods and services in question;
- a trademark is not necessarily a work of invention, originality or imagination - the fact that a mark is a slogan or promotional statement does not affect its capacity to communicate to consumers the trade origin of goods and services;
- the predominant use of the mark, as indicated by an internet search, supported the contention that the mark was capable of distinguishing ISCA's goods and services from those of others; and
- the registrar should take into account of several overseas registrations of the mark as a Community trademark, an international registration in designated territories and various overseas national registrations.
Alternatively, ISCA claimed that the mark had acquired distinctive character through use. It stated that its first use of the mark in Hong Kong (in articles, newsletters and promotional materials) dated back to 1997, and that the mark had generated income since 1999.
The registrar upheld the refusal to accept the mark for registration for the following reasons:
- On first impression, the mark is merely a general phrase with a charitable meaning - namely, rescuing, preserving or guarding children from danger, harm or other difficulties. If used in connection with the goods and services in question, the mark's meaning would immediately inform consumers that they were related to helping or saving children.
- As the mark is a general phrase, it is origin-neutral and cannot be perceived as distinguishing or guaranteeing without confusion the trade origin of goods and services, given that such phraseology may be used by others in a charitable cause.
- ISCA's use of the mark (on the evidence of the internet search) and the overseas registrations of the mark did not rebut the registrar's findings.
- ISCA's evidence illustrated that the mark had been used predominantly in conjunction with other words, such as 'Hong Kong' and 'Fund (Hong Kong)', and Chinese characters, together with devices in the form of several composite marks. The registrar was not satisfied that the evidence as a whole was sufficient to show that the mark was identified by a significant proportion of consumers as distinguishing the trade origin of the goods and services in question.
The ruling should not be interpreted as suggesting that a general charitable phrase or expression is unregistrable. The mark had already been registered in Hong Kong in respect of various goods in Classes 6, 21, 24 to 26 and 28. These registrations were granted on a prima facie basis - that is, without calling for evidence of use - and the registrations in Classes 6, 21, 24 and 26 were derived from the same multiple-class application which was rejected in respect of other classes.
However, it remains unclear why the registrar, while refusing to accept the mark for registration in certain classes, was nonetheless satisfied that the mark was inherently distinctive enough for registration in other classes. It might be argued that the registrar's reasons for refusal, particularly on the question of inherent distinctive character of the mark, also apply equally in the context of those goods in Classes 6, 21, 24 and 26 in which the mark has been accepted for registration, making it difficult to reconcile the two opposing outcomes concerning the registrability of the same mark in multiple classes.
Thomas Tsang, Wilkinson & Grist, Hong Kong
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