CATHERINE ZETA-JONES held to lack distinctive character

Hong Kong
The Hong Kong registrar of trademarks has rejected Cariad Properties Limited’s application for the registration of the mark CATHERINE ZETA-JONES for services in Class 41 of the Nice Classification on the grounds that the mark consisted exclusively of a sign that served to designate the characteristics of the services applied for and was devoid of any distinctive character (Application 300720134AB, June 24 2009).
 
The mark consisted of the name of the actress Catherine Zeta-Jones in plain capital letters and covered "entertainment services, including personal appearances by an actress; providing entertainment, film information, biographical information and news for entertainment purposes via a website on the Internet; fan clubs services" in Class 41.
 
Catherine Zeta-Jones is well known in Hong Kong: she has starred in a number of Hollywood films that were shown in Hong Kong and won an Oscar for best supporting actress in 2002. 
 
The registrar held that the mark, when used in relation to the services at issue, conveyed a direct and immediate message that:
  • the services related to Catherine Zeta-Jones;
  • the news and information at issue concerned the actress; and
  • the fan club services were aimed at fans of the actress. 
The registrar also held that because the mark consisted of the name of a famous actress, it merely conveyed a message about the contents of the services. The mark thus consisted exclusively of a sign that may serve to designate the characteristics of the services applied for. In line with Linkin Park LLC’s Application ([2005] ETMR 17), in which the name of the band Linkin Park was refused registration in the United Kingdom in relation to "printed matter, posters and poster books" in Class 16, the registrar considered that it was "essential for people providing entertainment services featuring Catherine Zeta-Jones to be able to designate the services by using her name". 
 
With regard to the issue of distinctiveness, the registrar, relying on British Sugar Plc v James Robertson and Sons Ltd ([1996] RPC 281) and Nestlé’s SA ([2004] FSR 2), held that where a mark conveys an origin-neutral message, the relevant consumers, without first being educated, will not view the mark as a reliable indicator of the commercial origin of the goods and/or services. 
 
Moreover, the registrar differentiated the present case from ELVIS PRESLEY  ([1999] RPC 567) and JANE AUSTEN ([2000] RPC 879), which concerned the sale of toiletry items in commemoration of deceased persons and where there was no direct link between the individuals and the goods applied for. In contrast, use of the mark CATHERINE ZETA-JONES for entertainment services would constitute use of the name of the actress in the field in which she has attained fame. Therefore, consumers would expect a performance by Catherine Zeta-Jones when seeing her name applied to the provision of entertainment services. Similarly, people joining a fan club under the mark would expect the services to be for fans of Catherine Zeta-Jones. The registrar thus concluded that consumers of the services at issue would not regard the mark as an identifier of commercial origin.  
  
Lily Cheung, Wilkinson & Grist, Hong Kong

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