In Creative Resources LLC’s Application (No 300765009) (Court of First Instance, Hong Kong High Court [2009], the Hong Kong High Court overturned the decision of the Trade Marks Registry that NAKED was descriptive for condoms.

BACKGROUND

On finding that the trade mark was devoid of distinctive character, the examiner said that the consumers would perceive the mark as nothing more than describing a characteristic of the goods applied for, as opposed to denoting trade origin. It was held that condoms were sheath like coverings that were often promoted with reference to their sheer thinness enabling users of them to feel naked or almost as if there is no covering.

DECISION

Overturning the Registry’s decision, Reyes J said:  

I would accept that, as a word, “naked” may be as “down-toearth” as one may get. But again, precisely because of theparadox inherent in describing a form of covering as an absence of covering, the link between “nakedness” and the characteristics of a condom is not immediately discernible.

Reyes J referred to the opinion of Advocate General Jacobs in P WM Wrigley v OHIM (DOUBLEMINT) C-191/01, specifically that:

…there is clearly a line to be drawn between terms which may be used to designate products or their characteristics and those which are merely suggestive of such characteristics… It seems obvious that there is no clear-cut distinction between indications which designate a characteristic and those which merely allude suggestively to it.

Considering this, Reyes J held that the term “naked” bore no direct objective relation to a condom and would not conventionally be used in English to modify the word “condom”. In fact, it would be contradictory to describe a condom (a form of covering) as being naked (being without covering).

Turning to the question of whether the word “naked” was capable of identifying condoms that originated from a particular undertaking, the judge held that since the term was unlikely to evoke a specific bundle of attributes in the minds of consumers. Instead, it was likely to connote different things to different people, the mark was capable of identifying the products of a particular undertaking in the mind of a given person and was capable of bearing distinctive character.

COMMENT

The judge reached a different conclusion from the examiner, based largely on the notion that “naked” is not an adjective normally used to qualify the word “condom”. In that sense, the case is a source of encouragement for those seeking to register marks that pun or represent a paradoxical play on concepts embodied in characteristics of the goods or services for which registration is sought.