Registration of NAKED for condoms allowed on appeal

Hong Kong

The Hong Kong High Court has overturned a decision of the Trademarks Registry in which the latter had refused to register the trademark NAKED in respect of condoms (Case 1607/2008, January 9 2009).

Creative Resources LLC, a US company, applied to register the trademark NAKED for condoms in Class 10 of the Nice Classification. The registry objected on the grounds that the mark:
  • consisted exclusively of a sign that might serve to designate the characteristics of the goods in question; and
  • was devoid of any distinctive character. 
At a subsequent formal hearing, the registry held as follows: 
  • The word 'naked' was descriptive of condoms in that it conveyed an immediate message that users would have a naked feeling or sensation when using the goods. In support of this argument, the registry quoted three internet websites in which the word 'naked' had allegedly been used to describe the feeling or sensation of nakedness which consumers might experience when using condoms.
  • Consumers were unlikely to regard the mark as identifying goods originating from a particular source.
The application was thus rejected (for further details please see "NAKED not registrable for condoms"). Creative Resources appealed to the High Court. 
 
Before the court, Creative Resources argued that:
  • the registrar had erred in considering that a user’s feeling or sensation when using a condom was equivalent to a characteristic of the condom itself; and
  • the registrar had attached too much weight to the internet searches (which were carried out only on foreign websites) in considering whether the trademark was descriptive.
The trademark legislation and case law in Hong Kong are substantially the same as those applicable in the United Kingdom and the European Union. The High Court applied the guidelines laid down by the European Court of Justice in the DOUBLEMINT Case (Case C-191/01 P) and concluded that the word 'naked' was more suggestive than descriptive when used in relation to condoms. In particular, the court held that:
  • the word 'naked' did not bear any direct relation to condoms; and
  • the link, if any, between the state of nakedness and the characteristics of a condom was not immediately discernible. 
The court was also of the view that the word 'naked' suggested different attributes to different people and thus connoted a characteristic that was merely arbitrary or subjective. 
 
In conclusion, the court considered that the mark NAKED did not directly describe a characteristic of condoms. Therefore, the mark was sufficiently distinctive and was inherently registrable. The three internet websites relied on by the registry were not regarded as supporting the registry’s position. Rather, the court held that the websites supported Creative Resources’s argument that the mark was:
  • merely suggestive, in some indefinable way, of the possible qualities of a condom; and
  • not descriptive of any specific characteristic of a condom within the meaning of the legislation.   
Accordingly, the appeal was allowed and the registry was ordered to pay Creative Resources's costs.
 
Philip Tsang, Marks & Clerk Hong Kong Incorporating Lloyd Wise, Hong Kong

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