Registration of NAKED for condoms allowed on appeal
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).
- consisted exclusively of a sign that might serve to designate the characteristics of the goods in question; and
- was devoid of any distinctive character.
- 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 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 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.
- 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.
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