NISSHA PRINTING CO., LTD. (NIHON SHASHIN INSATSU KABUSHIKI KAISHA) v. REGISTRAR OF TRADE MARKS

HCMP 720/2009

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 720 OF 2009

BETWEEN

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REASONS FOR JUDGMENT

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1.  By its originating summons dated 15 April 2009 the plaintiff appealed against the decision of the defendant the Registrar of Trade Marks (“the Registrar”) acting through the hearing officer Ms Connie Fu (“the hearing officer”) dated 18 March 2009 (“the decision”) refusing its application for the registration of the mark “Touch Window” (“the mark”) in Classes 9 and 17.

2.  On 12 January 2010 I dismissed the plaintiff’s appeal with costs to the Registrar. I indicated at the time that written reasons in writing would be given. This I now do.

3.  The approach on an appeal from a decision of the Registrar is not disputed.

4.  I re-iterate what I said in Re Host Hotels and Resorts (HCMP 554 of 2009; 22 December 2009) at paragraphs 7 to 11 of my judgment

“ 7.  On an appeal from a decision of the Registrar it is clear that the Court should not interfere with the decision unless it is satisfied that it was wrong in principle.

8.  In Terumo K K v Beecham Group Plc [1994] AIPR 306 it was held that the court would interfere with the Registrar’s decision only where it was satisfied that the Registrar had acted on some wrong principle, such as approaching the problem incorrectly, taking into consideration matters which he ought not to have taken into consideration or omitting to take into consideration matters which should have been considered.

9.  And in Bongrain SA’s Trade Mark Application [2005] RPC 14 Jacob LJ said at paragraph 9 :

“ The approach on appeal was also common ground.  It was accepted that Pumfrey J applied the right test on appeal from the registrar, namely that it was a re-hearing not a review, but that the Court should be slow to reverse the decision of the experienced registrar on a question which consists largely of a value judgment, such as “distinctive character”.”

10.  In Reef Trade Mark [2003] RPC5 Robert Walker LJ (as he then was) said at paragraph 28 :

“ …….an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.”

11.  In the recent decision of the Court of Appeal in Re Naked (Civil Appeal No. 15 of 2009; 15 December 2009) Rogers VP said at paragraph 22 of his reasons for judgment :

“ In my view, the correct approach is that the Registrar’s opinion has to be fully and carefully considered.  The Registrar has very particular experience.  Any departure from the way in which the Registrar exercised his discretion has to be made upon a sound basis after giving full and most careful consideration to the Registrar’s views and reasons.  The exercise of discretion by the Registrar should not be overruled simply because the court itself might have come to a different conclusion.  Essentially, therefore, a similar approach should be taken to the exercise of discretion by the Registrar as by a judge.”  ”

5.  Mr Hui accepted that in order to succeed the plaintiff had to show that the hearing officer was wrong in principle.

6.  The hearing officer held that the plaintiff’s application fell with the absolute grounds of refusal under section 11(1)(c) and (b) of the Trade Mark Ordinance Cap. 559. Both these grounds are separate and independent grounds of refusal.

7.  Section 11 provides

“ (1)  Subject to subsection (2), the following shall not be registered-

(a)  ………………………………………………………...;

(b)  trade marks which are devoid of any distinctive character;

(c)  trade marks which consist exclusively of signs which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services; and

(d)  ………………………………………………………..

(2)  A trade mark shall not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”

8.  As no evidence of use of the mark was filed, sub-section (2) does not assist the plaintiff. It was never part of the plaintiff’s case that the mark has in fact acquired a distinctive character as a result of the use made of the mark before the date of application.

Section 11(1)(c)

9.  The purpose of this ground of objection is to prevent the registration of signs which are descriptive of the goods or services or some characteristic of them. These marks are excluded from registration because they consist of signs or indications which honest traders either use or may wish to use (paragraph 8–080 Kerly’s Law of Trade Marks and Trade Names 14^th Edn).

10.  It is common ground that the applicable and established principles in considering section 11(1)(c) are those as set out in Kerly’s “Law of Trade Marks and Trade Names”at paragraph 8–082 as follows

“ The following principles now appear to be clear:

(1)  Art.3(1)(c)/7(1)(c) are in the public interest, to ensure that descriptive terms may be freely used by all (DOUBLEMINT, para.31; P0STKAN­TOOR, para.68).  Recently, the ECJ has taken to referring to the “general interest” underlying the provisions in 3(1)/7(1), rather than the public interest.

(2)  It is not necessary that such descriptive terms are actually in use, it is suf­ficient that such signs and indications could be used to designate a characteristic of the goods or services (DOUBLEMINT, para.32; POST­KANTOOR, para.97).

(3)  Accordingly, a sign must be refused under these provisions if at least one of its possible meanings designates a characteristic of the goods or ser­vices concerned (DOUBLEMINT, para. 32).

(4)  Likewise, it is irrelevant if there are other, more usual signs or indications for designating a particular characteristic of the goods or services. These provisions do not require that the sign or indication under examination should be the only way of designating the characteristic in question (POSTKANTOOR, para.57).  It is irrelevant if there are synonyms.

(5)  “exclusively” requires a purposive approach.”

11.  The hearing officer at paragraph 9 of the decision said that in relation to the applied for goods, the relevant consumers are members of the public in Hong Kong. I agree. As she correctly said at paragraph 19 of the decision the relevant consumers are presumed to be reasonably well informed, circumspect and observant.

12.  The application was in respect of the goods in

(1)  Class 9 for

“Data input/output devices including but not limited to touch panels, touch screens, liquid crystal display panels, electronic pens and their parts and electronic machines incorporating the foregoing; portable telephones; personal digital assistants,smartphones, laptop computers, computers, digital cameras; printed circuits; integrated circuits.”; and

(2)  Class 17 for

“Plastic semi-worked products having data input/output devices; plastic films other than for wrapping; plastic substances, semi-processed.”

13.  The hearing officer said at paragraphs 10, 11 and 12 as follows

“10.  The subject mark consists of the words “Touch” and “Window” in plain form.  According to Collins English Dictionary, Millennium Edition, “Window” means “an area of a VDU display that may be manipulated separately from the rest of the display area; typically different files can be displayed simultaneously in different overlapping windows” and “Touch” means “a gentle push, tap or caress”.  When the subject mark is used in the context of the applied for goods which are input/output devices and electronic products, the word “touch” also refers to the technology which allows users to interact with software and device by human touching and the combined term “Touch Window” would convey the message to the average consumers that the goods are the “kind” of products which can be operated by touching the window display area or the products have a window display with touch input facility.  Touch input facility is a kind of technique which enables users to interact with what is displayed on the screen directly by a finger rather than indirectly with a mouse or other pointing devices.  I also consider that the term may serve to designate the “intended purpose” of the applied for goods and the desirable “quality” in such goods as compared to less sophisticated models which do not offer such window display with touch input facility.  As the subject mark contains only the term “touch window”, I consider that the subject mark as a whole consists exclusively of words which may serve in trade to designate the kind, intended purpose and quality of the applied for goods.

11.  Prior to the hearing, searches were conducted on the Internet on the usage of the term “Touch Window” in relation to input/output devices and electronic products.  The search results indicate that the term “Touch Window” is indeed used by traders other than the Applicant as a reference to a device of the kind like mouses, intellikeys, pressure switches etc. that are hand-operated devices for computers.  As such the term is designating the kind of goods offered as I have discussed.  The internet references cited in the Notice of the Registrar’s opinion dated 29 November 2006 (“the internet references”) are now reproduced at Annex A to this Decision.

12.  In the light of the above, when the words “Touch Window” are used in relation to the applied for goods such as touch screens, display panels, portable telephones, personal digital assistants, computers and digital cameras in Class 9 and plastic semi-worked products having data input/output devices in Class 17, the subject mark informs the consumers the kind, quality and intended purpose of the applied for goods, namely, that they consist of or relate to a window display with touch input facility.”

14.  I agree with what the hearing officer said at paragraphs 10, 11 and 12 of her decision.

15.  Mr Hui submitted that references by the hearing officer in the definition of “Window” to an area of VDU display that may be manipulated separately from the rest of the display area and the reference to a “window display area” shows that what was being manipulated was software rather than hardware. He emphasised that what was being manipulated by touch was through software and not hardware and that the predominant emphasis was on the word “Window” in the mark. Mr Huisubmitted that the term “window” as understood in computer definition is not a reference to a display or screen but what is inside such a device, namely the software which was not part of the applied for goods.

16.  I am unable to accept these submissions.

17.  It is plain that the mark as a whole must be considered. What does the mark as a whole convey to the relevant consumer? As the hearing officer said at paragraph 14

“ It is well established that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (paragraph 32 of the DOUBLEMINT case).  As with many other words, “Window” and “Touch” bear a range of possible meanings according to dictionaries.  When they are combined together and used in relation to the applied for goods, they will immediately designate that the goods consist of or relate to a window display with touch input facility.  In view of the descriptive message conveyed by the subject mark and the fact that there is no other element or stylization in the mark, the mark is considered to consist exclusively of a sign which may serve in trade or business to designate the characteristics of the applied for goods and therefore falls foul of section 11(1)(c) of the Ordinance.”

18.  I agree with the hearing officer and am unable to see any flaw in her reasoning.

19.  It matters not whether the software or the hardware is being manipulated by touch. In relation to the applied for goods the mark as a whole immediately designates to the relevant consumers that the goods consist of or relate to a window display with touch input facility and hence for the reasons given by the hearing officer it falls foul of section 11(1)(c).

20.  In my judgment the hearing officer correctly applied the established principles and came to the right decision. No error of principle has been shown.

Section 11(1)(b)

21.  The mark is only registrable if it is not devoid of any distinctive character i.e. it is inherently distinctive.

22.  The principles cited at paragraphs 17 and 18 of my judgment in Re Host Hotels & Resorts are not disputed. These are

“ 17.  In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 Jacob J (as he then was) said at page 306 :

“What does devoid of any distinctive character mean? I think the phrase requires consideration of the mark on its own, assuming no use. 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?”

18.  In Nestle SA’s Trade Mark Application (Have A Break) [2004] FSR 2 Sir Andrew Morritt VC (as he then was) said at paragraph 23 :

“The distinctiveness to be considered is that which identifies a product as originating from a particular undertaking. Such distinctiveness is to be considered by reference to goods of the class for which registration is sought and consumers of those goods.  In relation to the consumers of those goods the court is required to consider the presumed expectations of reasonably well informed, and circumspect consumers.  For my part I would particularly emphasise that the relevant distinctiveness is that which identifies a product as originating from a particular undertaking……”  ”

23.  The hearing officer said at paragraph 19 of the decision

“……… the distinctiveness of the subject mark must be assessed by reference to the applied for goods and services for which the Applicant seeks registration, and the perception of the relevant consumers, who are presumed to be reasonably well informed, circumspect and observant.  To determine whether the subject mark has any distinctive character for the purpose of section 11(1)(b) of the Ordinance, the relevant question is whether the mark, assuming no use, serves to identify the Applicant’s products and services as originating from a particular undertaking, and thus distinguishing it from those of the other undertakings.  In other words, the question is whether the perception and recollection the subject mark would trigger in mind of the average consumer of the applied for goods and services would be origin specific (i.e. carry connotations of trade origin) or origin neutral (“CYCLING IS…” Trade Mark Applications [2002] R.P.C. 37 at paras. 66-69).”

24.  At paragraph 21 she said

“ As demonstrated above, the subject mark conveys a descriptive meaning as to the kind, intended purpose and quality of the applied for goods.  As such, I consider that when it is used in respect of the applied for goods, the relevant consumer would immediately perceive it, on first impression, as an indication that the goods consist of or relate to a window display with touch input facility, rather than that they are the goods of a particular trader.  I am not satisfied that without first educating the public that the subject mark is a trade mark, the consumers would perceive the subject mark as a badge of origin and rely on it to distinguish the Applicant’s goods from those of other traders.  Therefore, the mark is also considered to be devoid of any distinctive character under section 11(1)(b).”

25.  And at paragraph 22 the hearing officer referred to the internet references which she said did not form the basis of her decision but served to reinforce her finding that the mark is descriptive of the kind of goods offered and the average consumer would perceive the mark as a mere indication that the goods consist of or relate to a window display with touch input facility. She went on to say that

“ The average consumer are unlikely to rely on the subject mark as a badge of trade origin for identifying the applied for goods as originating from a particular undertaking.  The message conveyed by the subject mark is therefore origin neutral, rather than origin specific.”

26.  I agree with the hearing officer. I am unable to discern any error of principle in her reasoning.

27.  Mr Wong, for the Registrar, submitted that the plaintiff’s complaint that there was a failure on the part of the hearing officer to establish the matters set out in the plaintiff’s written submissions, particularly at paragraphs 19, 39, 42 and 49 was erroneous and that there was no burden on the hearing officer to establish anything under the Ordinance.

28.  It seems to me that the plaintiff’s complaint that there was a failure by the hearing officer to establish the matters as set out in the plaintiff’s written submissions at paragraphs 19, 39, 42 and 49 is misconceived.

29.  As is set out at section 42(4) of the Ordinance the Registrar

“ shall refuse to accept the application if the applicant-

(a)  ………………….; or

(b)  fails,……….to satisfy the Registrar that the requirements for registration are met or to amend the application so as to meet those requirements.”

30.  In EUROLAMB Trade Mark [1997] RPC 279 it was held that there was no presumption either way in favour of or against registration. Each application had to be considered on its own merits.

31.  It is for the plaintiff to show that the requirements for registration are met. There is no burden on the hearing officer to establish that the requirements are not met in justifying her decision to refuse registration.

32.  For the above reasons, I dismissed the plaintiff’s appeal. As costs should normally follow the event, I also ordered that the costs of the appeal be paid by the plaintiff to the Registrar.