Shoe device held to be unregistrable for footwear

Hong Kong
On August 17 2010 the Hong Kong registrar of trademarks refused an application to register the device mark shown below in respect of "shoes, boots etc" in Class 25 of the Nice Classification on the basis that the mark:
  • was devoid of distinctive character (Section 11(1)(b) of the Trademarks Ordinance); and
  • consisted exclusively of a sign which designates the characteristics of the goods applied for (Section 11(1)(c) of the ordinance). 

The registrar held that the shoe device was a two-dimensional representation of a shoe with a cloud of air spurting out from the sole. It showed merely that air can pass through the sole, and hence designated the characteristics of the shoes and footwear applied for. The perception was direct and immediate. Therefore, the application failed under Section 11(1)(c) of the ordinance.
 
The mark also lacked distinctive character, since the natural instinctive impression that a consumer would receive on seeing the mark was that the shoe is air permeable. However, he or she would not associate the mark with a particular source.
 
The applicant also sought to file evidence to prove acquired distinctiveness of the mark through use. However, since the evidence showed use of different versions of the breathing shoe design by the applicant, the registrar held that consumers would think of the representations only as indicative of the styles or designs of the applicant's products, with them all having high air permeability qualities. The evidence failed to educate the relevant consumers adequately of the function of the mark to distinguish the goods and services of the applicant from those of other undertakings. On that note, the registrar referred to the chapter of the Trademarks Work Manual on absolute grounds of refusal, which states, under Section 11(2) on acquired distinctiveness through use, that:
 
"An application for a different typeface to that actually used needs to be considered carefully. Would the variant qualify as a series? If not, the use would not qualify as establishing factual distinctiveness."
 
The registrar also seems to have suggested that, where different versions of a mark are used, the sales figures and advertising expenditure supplied as evidence should be separated to reflect the sales and advertising expenditure corresponding to the different marks, and not just to shoes as a whole.
 
Helen Tang, Wilkinson & Grist, Hong Kong

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