In Case 1607/2008, January 9 2009, the Hong Kong High Court accepted an appeal from a US company, Creative Resources LLC, to register the trademark NAKED for condoms in Class 10.
The registry objected to the mark on the grounds that it designated the characteristics of the goods in question and was devoid of any distinctive character. At a subsequent formal hearing, the registry held that the word ‘naked’ was descriptive of condoms in that it conveyed an immediate message that users would have a naked feeling or sensation when using the goods.
The register also held that Consumers were unlikely to regard the mark as identifying goods originating from a particular source.
In the appeal, Creative Resources argued that the registrar had erred in considering that a user’s feeling or sensation when using a condom was equivalent to a characteristic of the condom itself.
The trademark legislation and case law in Hong Kong are substantially the same as those of Britain and of the European Union. Applying the guidelines of European Court of Justice in the DOUBLEMINT Case, the Hong Kong High Court ruled that the term NAKED did not bear any direct relation to condoms; and the link, if any, between the state of nakedness and the characteristics of a condom was not immediately discernible. The court was also of the view that the word ‘naked’ suggested different attributes to different people and thus connoted a characteristic that was merely arbitrary or subjective.
The appeal was allowed and the registry was ordered to pay Creative Resources’s costs.
Whilst we assume that the user is likely to be in a state of at least partial undress, that does not per se. imply that the term is descriptive of the goods themselves.
Class 10 of the Nice Classification covers Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles, suture materials.
I assume that NAKED condoms are rubber goods, so wonder why class 17 (Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal) wasn’t conisdered appropriate.
Richard Branson successfully registered the word MATES as a trademark for condoms despite this term being even more descriptive of the usage of the goods. We note with satisfaction that for once, Branson decided that Virgin was not an appropriate term to choose.
We also note that Durex have a number of somewhat descriptive brands of condoms registered around the world.