Unilever's application for COOL FRESH in Class 3 refused on absolute grounds

Unilever NV filed an application to register COOL FRESH as a trademark in respect of goods in Class 3 of the Nice Classification, including “soaps; perfumery; shaving foam; preparations for the bath and shower etc". Objections were raised pursuant to Sections 11(1)(b) and (c) of the Trademarks Ordinance - that is, that the applied-for mark:

• was devoid of any distinctive character; and
• consisted exclusively of signs which served, in trade or business, to designate the characteristics of the goods applied for.

The registrar upheld the grounds for refusal.

Applying Wm Wrigley Jr Company v OHIM, the registrar held that a mark must be barred from registration if it could be used to designate characteristic(s) of the goods or services applied for. The applied-for mark as a whole conveyed a “direct and immediate message” that the goods brought about a cooling and brightening effect, and thus was capable of designating the essential characteristics of the goods in Class 3. The applied-for mark remained descriptive even with the combination of 'cool' and 'fresh'. Accordingly, registration was refused under Section 11(1)(c).

The registrar cited Host Hotels & Resorts, LP v Registrar of Trademarks and stated that the test for distinctiveness is whether a mark can distinguish a product as originating from a particular undertaking, considering the goods applied for and the perception of the relevant consumers (ie, the general public in this case). The registrar held that, given the descriptive nature of the applied-for mark, when it was applied to the goods the relevant consumers would perceive it as referring to the characteristics of the goods. Thus, the applied-for mark failed to distinguish the trade origin of the goods and, accordingly, was refused registration under Section 11(1)(b).

The registrar further held, distinguishing Kustoms Musoical Amplification Inc v OHIM, that the internet results set out in the Trademarks Registry’s letter on other traders’ descriptive use of the term 'cool fresh' for similar goods were relevant, despite such findings coming from overseas websites and being found after the application date.

Mena Lo and Kwok Yue So, Wilkinson & Grist, Hong Kong