16 November 2010
Geox's application for trade mark registration of a design of a shoe with a cloud of air spurting out from the sole (see figure 1) has been refused in a hearing before the Hong Kong Registrar of Trade Marks on the ground of lack of distinctiveness.
A shoe with a cloud of air spurting out from the sole appears to be a fanciful mark in the eyes of most, but for the purpose of trade mark registration, it cannot pass through the Registrar's (high) standard of distinctiveness required. The Registrar views that when this mark is used on footwear, it merely shows that air can pass through the sole and hence it designates the characteristics of the goods.
Geox has tried to argue that whilst the shoe alone is a simple depiction of the goods, the additional features of the mark are creative and would add a distinctive component to it. Further, Geox suggests that the first impression people had of the subject mark would be that of an iron with steam emanating from it and consumers would not immediately think that the mark directly sends a message that the shoe can breathe. In response, the Registrar concluded that the mark as a whole merely tells consumers that air can go through the sole easily so the shoe allows high permeability of air.
This case illustrates that any evidence of use to support a claim that a particular mark has acquired a distinctive character must be use of the mark as it is exactly applied for at the first time of registration. Geox has relied on different versions of breathing shoe designs in the evidence seeking to register any representation of a shoe, and not a particular shoe, with steam emanating from its sole. The Registrar is not convinced that the different versions of breathing shoe designs constitute satisfactory evidence of use of the applied-for mark for the reasons that the differences among the signs as used are of such a great extent that they cannot be regarded as forming a series to back up pre-application use of the applied-for mark.
Over the years, we have represented brand owners to successfully persuaded the Registry to accept registration of design marks with arguably descriptive connotations, for example the Travelodge logo (see figure 2) featuring a sleeping person for temporary accommodation services. From our experience, the Registry adopts a more stringent and conservative approach in handling a mark that features the actual shape of the goods in respect of which the mark is intended to be used. Such kind of design marks often need to incorporate a distinctive word mark in order to proceed to registration.
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