When establishing a brand and trademark, intellectual property practitioners often encounter applicants who wish to directly use a trademark containing a local geographic term. However, trademarks comprising a geographic term have a high likelihood of being opposed by the trademark offices in most jurisdictions. The Hong Kong trademark case discussed herein is an example of such a scenario, where the Trade Marks Registry refused the registration.
The trademark at issue was "台北巷弄 (Taipei Alley)" for catering services. The Trade Marks Registry refused registration on the grounds that the trademark merely indicates that the relevant services are associated with the narrow alleyways of Taipei, and the aforementioned trademark is composed solely of signs that can be used in the industry or business to designate the characteristics of the services, rather than a distinctive mark that can distinguish the applied services from similar services.
Firstly, Section 11(1)(c) of the Trade Marks Ordinance stipulates that "a trade mark shall not be registered if it consists exclusively of signs or indications which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services" as a ground for unregistrability.
Secondly, any mark that falls under the above rationale must necessarily also be considered devoid of any distinctive character pursuant to Section 11(1)(b) of the Trade Marks Ordinance, meaning that the trademark cannot be recognized as a trademark by the average consumer.
This is a challenging situation to navigate, as the trademark application containing a geographic term is an objective fact. Therefore, when making representations to the examination officer, it is necessary to have a thorough understanding of the legal principles underlying the relevant ordinances and case law, in order to explain that the trademark is not merely descriptive and can indicate the commercial origin of the product and service, rather than describing a characteristic thereof. Given Hong Kong's common law system, written submissions should, to the extent possible, cite relevant common law precedents to substantiate the legal principles and other similar registration cases for the examination officer's reconsideration.
In the present case, we successfully referenced a relevant common law precedent and cited registered trademarks such as "北京樓 (Beijing Building)", "胡同 (a proper name for narrow street or alley in northern Chinese cities)", and "上海灘 (The Shanghai Bund)" to the examination officer, demonstrating that under the same legal framework, "Taipei Alley" for catering services does not solely describe a characteristic of the service, and we were ultimately able to secure registration for the applicant.
In conclusion, trademarks containing a geographic term face a considerable risk of refusal for registration in various jurisdictions. However, when faced with a refusal by the examination officer, it is still possible to persuade the examination officer to accept the registration application. Through our firm's extensive expertise in the trademark field and in-depth understanding of trademark laws across different regions, we are able to assess the prospects and advocate for the maximum benefits for each applicant.
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