"PATTERN Device"
Hong Kong
- Registrability
Louis Vuitton Malletier ("Applicant") applied to register a trademark consisting of a chequered pattern as applied to the surface of luggage and goods made of leather, amongst other things, in class 18. The application was assigned application no.11772/1996. The chequered pattern resembled a potion of a chess board consisting of thirty-six distinct squares. The squares were represented alternately in the colours brown and beige and there was a fine pattern on the squares. The Registrar refused the application on the basis that it was neither distinctive nor capable of becoming distinctive.
During the course of prosecution the Applicant indicated that the device had been used prior to the application date but did not file evidence of use. The Applicant requested a hearing on the registrability of the device mark. At the hearing the Applicant argued that the mark was distinctive for the proposes of a registration in Part A and that in the alternative it was at least capable of becoming distinctive and should be registrable in Part B. At the hearing the Applicant conceded there was minimal pre-application use but argued that there was significant post application use and such use should be considered. The Registrar reserved her decision at the hearing.
The Registrar maintained that the device mark was neither registrable in Part A nor Part B. In considering whether the applicant's mark was registrable the Registrar had regard to the following factors:
Whether the subject mark covered the whole of the visible surface of the goods of interest. The Registrar decided that the mark was capable of being a trade mark within this requirement
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Whether the mark indicated a connection with Applicant in the course of trade.
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Whether the Applicant's mark is distinctive or capable of becoming distinctive.
The Registrar indicated that factors two (2) and three (3) are inter-related.
The Registrar emphasized that the onus of establishing that the trade mark is registrable lies with the Applicant. The Registrar was sensitive to the fact that no formal evidence was filed to support the claim of distinctiveness even though there was sufficient time to do so.
In considering whether the mark was inherently adapted to distinguish the Registrar emphasized that the test was whether "other traders are likely, in the ordinary course of their businesses and without any improper motive, to decide to use the same mark, or some mark closely resembling it".
The Registrar dismiss the weft and warp pattern resembling that of a woven fabric as being too fine a detail to be noticeable by the average shopper. The Registrar doubted if the pattern functioned as a badge of origin.
The Registrar dismissed the offer of a colour limitation as being of no avail since brown and beige are two of the most common colours used for class 18 goods and the combination of those colours was an obvious combination for use in relation to the goods. The Registrar concluded that the Device mark was not adapted to distinguish. In considering whether the mark was capable of distinguishing the Registrar indicated that there was no evidence that other traders would not wish to use the same mark or one merely resembling it.
Decision of the Registrar of Trade Marks 16 November 2000 (unreported)
