Distinctiveness Of Trademark

If a sign lacks distinctiveness, it cannot function as a trademark and its registration would likely be refused.

If the Hong Kong Trade Mark Registry has refused registration of a trade mark on the ground that it is not distinctive, the applicant can submit evidence in the form of Statutory Declaration to prove that prior to application date for registration, the mark has in fact become distinctive as a result of the use made of it.

The Statutory Declaration should contain evidence on:

• what the mark is
• how it is used
• that it is used by you, or by another person under licence from you
• how long you have used it and under what circumstances
• how it has become distinctive, that is, how the customers recognise the goods or services sold under the mark as your goods or services.

A trademark can be inherently distinctive or it can acquire distinctiveness. Fanciful, arbitrary and suggestive trademarks are inherently distinctive.

Fanciful trademarks are invented words or signs without real meaning. Arbitrary trademarks are words or signs that have no logical relation to the products or services they advertise. For example, the use of the word APPLE or the image of an apple for mobile phones marketing.

On the other hand, generic signs are words or signs that name the species or object to which they apply. For example, the word ‘Sushi’ cannot be registered as trademark for marketing sushi. The word is without distinctiveness and is not eligible for protection. This is because no one can claim the exclusive right to use the word Sushi for sushi.

Descriptive words have little distinctiveness and are in principle not eligible for protection, for example the words only describe some features of the products like its quality, quantity, intended purpose, origin, etc.

 

For legal advice or services on trademark disputes or trademark infringement, please contact CHOW & CHEUNG, Hong Kong Solicitors & Notary Public. [Tel: +852 2856 3799 or Email: cac@ccsn.hk]

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