Many companies are tempted to use positive adjectives directly as their brand or trademark, such as "premium," "best," "super," "delicious," "fresh," "natural," "smart," and so on. However, applications for these kind of descriptive trademarks are often rejected by trademark offices in most jurisdictions.
Let's consider a case study: the trademark "Perfetta," which covers masks and gloves. The term "Perfetta" means "Perfect" in Italian. The Hong Kong Trade Marks Registry raised a preliminary objection, citing that the word may simply describe the quality or characteristics of the products, rather than function as a distinctive mark to differentiate the goods from those of other traders.
According to Section 11(1)(c) of the Hong Kong Trade Marks Ordinance, trademarks that "consist exclusively of signs which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services" are grounds for refusal of registration. Additionally, any marks rejected under Section 11(1)(c) must also be rejected under Section 11(1)(b) as "trademarks which are devoid of any distinctive character."
Overcoming a descriptive trademark refusal can be extremely challenging, as the chances of success are often slim. Descriptive words are commonly used in advertising or to describe related products and services, and granting registration for such marks could affect fairness within the industry.
To address this issue, we must have a thorough understanding of relevant case law and conduct extensive searches to identify any existing registered marks in similar situations. In common law jurisdictions, it is also crucial to cite relevant precedents and legal principles in the written arguments.
In the case of "Perfetta," we argued that Italian is not a widely spoken language in Hong Kong, and only a small portion of the public would recognize the word as Italian. We also cited a successful British case and several registrations for "Perfetta" in other countries, including Italy, to demonstrate that trademark offices in other jurisdictions considered the term registrable as a trademark.
Ultimately, our comprehensive approach and strategic arguments persuaded the Hong Kong Trademark Registry to withdraw its objection, and the "Perfetta" trademark was successfully registered.
In conclusion, applying purely descriptive words, even in a foreign language, as a trademark is generally a risky strategy that is likely to face rejection. However, if you find yourself in such a situation, seeking professional guidance from experienced trademark specialists can help maximize your chances of overcoming the challenge and securing the desired registration.
If you have any questions or concerns about your trademark application or facing a rejection, our team of trademark experts at RIGHT IP is here to provide tailored advice and strategies to protect your brand. Feel free to reach out to us through the contact information provided.
Email: inquiry@rightipa.com
Tel/Whatsapp: +852 5327 3854
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