"SUPERFUND"

Hong Kong
- Registrability
- Devoid of distinctive character

 

Summary

Superfund Asset Management Beteiligunts AG (the “Applicant”) applied to register the trade mark “” for investment management, financial investments and financial investment consultation services in class 36 (“the Mark”). The Mark was presented in a stylized manner and in combination with accompanying artwork.

The Registrar objected to the application on the basis that the subject mark was devoid of any distinctive character for the financial investments services.

The applicant argued that the use of the stylized letter “S” in the Mark was distinctive and capable of distinguishing the applicant's services from other business undertakings. The applicant referred to an earlier trade mark registration which consists of basically a single stylized capital “S”. The applicant argued that if the letter “S” alone could be considered sufficiently distinctive to be registered as an individual mark, the stylized “S” in the word ‘Superfund” should be equally apt to present distinction for the subject mark. However, the Registrar responded that each case must be decided on its own merits and not by reference to other marks that have been judged registrable on other occasions.

In deciding whether the Mark is devoid of any distinctive character, the Registrar applied the following test drawn from British Sugar Plc v James Robertson and Sons Ltd [1996] RPC 281 at 306 :

“Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?”

The Registrar considered that in assessing the distinctiveness of a mark that combines a number of elements, the mark must be regarded and considered as a whole. However, the Registrar was of the view that when assessing the impact of the whole on the public, it is proper to consider the separate integers of a mark.

The Registrar then considered the words in the Mark. The Registrar asserted that the words “Super” and “Fund” are ordinary English words which together convey a direct message that the fund services provided by the applicant are larger or better-performing than other funds and that those words can be used by other traders in financial services.

Further, the Registrar considered the way the words were presented in the Mark. The Registrar asserted that the mere fact that the letter “S” is presented in a stylized way whereas the rest of the word “superfund” consists of plain block betters would not make the mark distinctive as a whole. The Registrar was of the view that an average consumer would perceive the Mark in its entirety and would not single out the representation of the letter “S” and attach significance to the whole mark.

The Registrar therefore concluded that the Mark does not serve to identify the services as originating from a particular undertaking before the public is educated that it is so used for that purpose.

The applicant submitted printouts of Google and Yahoo searches and asserted that a search of the word “Superfund” would link to the applicant's website and that the Mark has been used prominently since 2002. The applicant argued that the Mark has acquired distinctiveness as a result of the use made of it. However, the Registrar responded that no evidence of use in the form of statutory declaration or affidavit has been filed by the applicant and the printouts alone would not be sufficient to establish the acquired distinctiveness of the Mark.

The Registrar refused the registration of the Mark under section 11(1)(b) and section 42(4)(b) of the Trade Mark Ordinance (Cap 559).

Decision of the Registrar of the Trade Marks dated 1 June 2006 (unreported)