YOUR WORLD IS MY WORLD lacks distinctive character

Hong Kong

The Hong Kong Trademarks Registry has refused Alexander Forbes Limited's application to register the slogan mark YOUR WORLD IS MY WORLD pursuant to the new Trademarks Ordinance implemented on April 4 2003 (see Trademarks Ordinance implemented after three-year delay).

South African company Alexander Forbes applied to register the slogan mark for insurance and financial services in Class 36 of the Nice Classification. It adduced no evidence of use of the mark.

Confirming that the same test for assessing distinctiveness applies to slogans as to other types of marks, the registrar rejected the application by finding that it was devoid of any distinctive character. The registrar noted that, according to Justice Jacob in the UK decision of British Sugar plc v James Robertson & Sons Ltd ([1996] RPC 281), the phrase "devoid of any distinctive character" requires consideration of the mark on its own, assuming no use. The question is whether it is the sort of sign that cannot do the job of distinguishing without first educating the public that it is a trademark.

The registrar held that when examined from the perspective of the average, reasonably informed and observant consumer of the services covered by the application, Alexander Forbes's slogan was simply a promotional statement composed of a sequence of ordinary dictionary words, which could be used for publicizing a wide variety of services. Even if Alexander Forbes could show that the slogan was an invented phrase, it did not necessarily follow that it would have the required distinctive character.

Chloe Lee, Wilkinson & Grist, Hong Kong

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