Many companies are keen to use positive adjectives directly as its brand and/or trademark, for example, premium, best, super, delicious, fresh, natural, smart, etc. However, these descriptive trademark applications would mostly be rejected by the official in most jurisdictions.
The trademark case that we (Right IP) would like to introduce is "Perfetta", which covers masks and gloves. The term "Perfetta" in Italian means "Perfect", therefore, the Hong Kong Trademark Registry raised a preliminary objection due to the words may purely describes the quality or certain characteristics of the products, rather than a mark that would distinguish the products from a trader to those of others.
According to Section 11(1)(c) of the Hong Kong Trade Marks Ordinance, "trademarks which 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" is one of the common grounds for refusal of registration. In addition, any marks are rejected under Section 11(1)(c) must also be rejected under Section 11(1)(b) of the Trade Marks Ordinance "trademarks which are devoid of any distinctive character" and cannot be registered, in other words, the mark cannot be regarded as a trademark by ordinary people.
When the mark is considered as a descriptive word, it is extremely hard to handle, as the chances of successful overcoming are rare. In view of the descriptive words are commonly used on the advertisements or as a description of relating products and/or services, the mark constituted purely by these words will affect the fairness of the entire industry if the registration is granted. Therefore, we must have sufficient knowledge of the relevant cases, and conduct a lot of searches to find out whether there are registered mark in similar situation, to determine whether there is any grounds and chance of appeal. In addition, if it is in a common law jurisdiction, relevant common law precedents and legal principles should also be cited in written argument.
In this case, we argue that Italian is not a language that generally spoken in Hong Kong public, and only a few people who may identify "perfetta" as an Italian word. We cited a British case and many successful registrations for "Perfetta" in different countries (including Italy), indicating that trademark officials in other jurisdictions (especially the Italian trademark office) consider it could be used and registered as a trademark. Finally, the Hong Kong Trademark Registry has accepted our argument and withdrawn its objection.
In conclusion, applying a purely descriptive words (even in a foreign language) as a trademark will mostly be rejected by the official in any jurisdictions. Therefore, it is advisable not to choose purely descriptive words for trademarks and brand names. However, if you are already in such a situation, you can seek for consultation from us, we are keen to deliver suitable advice and maximize the interests for applicant with our extensive expertise in the field of trademarks and in-depth understanding of trademark laws in different jurisdictions.
If you have any questions relating to trademark applications or facing a rejection, you can contact our specialists in the following ways:
Email: [email protected]
Tel/Whatsapp: +852 5327 3854 / +852 5336 1214
