WONDERFUL for nuts held to be laudatory
The trademark registrar has refused an application for the registration of the mark WONDERFUL by Paramount International IP Holding Company for “processed nuts” in Class 29 of the Nice Classification for being descriptive and devoid of distinctive character.
In considering the distinctiveness of the mark, the registrar referred to the principles set out in British Sugar Plc v James Robertson and Sons Ltd ( RPC 281)) and Nestle SA’s Trademark Application (HAVE A BREAK) ( FSR 2).
The mark consisted of the single word 'wonderful' set against a dark background, with the letter 'O' represented by a heart:
The relevant consumers are members of the general public. As 'wonderful' carries the dictionary meaning of “extremely good” and is a laudatory term that can be used for a wide range of goods and services, when used on processed nuts it clearly informed consumers that the nuts are extremely good. The heart-shaped letter 'O' in the mark is very small – the heart is not noticeable at first glance and consumers’ attention is not deliberately drawn to it. The dark background simply accentuates the prominence of the word itself. Consumers’ first impression of the mark is that it lauds and describes the quality of the goods; as any undertaking wishing to promote its goods as being of excellent quality can use 'wonderful' in relation to those goods, the mark will not be regarded as a sign that indicates the origin of the goods.
The applicant, relying on Ford Motor Co v OHIM ((Case T-67/07)), argued that the mark should not be objected to because it conferred only a positive message on the goods, and the link between 'wonderful' and processed nuts was too vague, uncertain and subjective to convey a descriptive message about the goods. The registrar did not consider the Ford case comparable as it related to the use of the word 'fun' on a motor vehicle, which was not considered to have gone beyond the suggestion of a positive image about the vehicle, and the mark did not inform consumers of any qualities or specific characteristics of the goods. On the other hand, the use of the word 'wonderful' on processed nuts confers a positive image about the goods and conveys a clear message to consumers about the quality of the goods. Thus, the link between the mark and processed nuts was direct, certain and immediate.
Referring to Eurocool Logistick GmbH v OHIM (T-34/00), the applicant argued that the heart-shaped letter 'O' added distinctiveness to the mark and only a minimum degree of distinctiveness is sufficient for registration. However, considering the overall impression of the mark, as the letter 'O' was the same size as the other letters in lower case, its prominence and significance was overshadowed by the larger upper case 'W' next to it. As consumers would pay no particular attention to the heart shape, it would simply be regarded as a letter 'O' and the mark on the whole as the word 'wonderful'.
From the perspective of relevant consumers, the overall impression of the mark was of a laudatory and descriptive word describing the quality of the processed nuts. Without first being informed of its trademark significance, consumers would not realise that the mark is intended to identify goods as originating from a particular undertaking. As the mark was found to be devoid of distinctive character under Section 11(1)(b) of the Trademarks Ordinance (Cap 43), arguments relating to refusal under Section 11(1)(c) were not considered.
Lily Cheung, Wilkinson & Grist, Hong Kong
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