RE ALLDRESSEDUP INTERNATIONAL PTE LTD

HCMP 93/2009

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 93 OF 2009

----------------------

--------------------------

----------------------

J U D G M E N T

----------------------

I.   INTRODUCTION

1.  The Applicant wishes to register “alldressedup” as a trade mark for class 14, 18 and 25 goods.  Those classes respectively relate to imitation and other types of jewellery; articles made from animal skins and other materials; and articles of beach wear and other types of clothing.

2.  Trade Marks Ordinance (Cap.559) s.11(1) provides that the following marks should not be registered:-

“(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 purposes, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods and services.”

3.  The Registrar of Trade Marks first refused registration on 27 July 2007.  The Registrar did so on the basis that the mark “merely describes that the applied-for goods are fancy or formal clothing or designed to match with fancy or formal clothing”.  The Registrar thought that the mark consisted “exclusively of a sign which may serve to designate the characteristics of the goods” in the relevant classes.

4.  On 14 March 2008, after hearing further submissions from the Applicant, the Registrar again rejected the application for essentially the same reason as previously. 

5.  The Registrar did not accept that there was a “graphic or semantic modification” to the ordinary sense of the English phrase “all dressed up” arising from the Applicant’s combination of the 3 words in the phrase into the single sign “alldressedup”. Accordingly, the Registrar did not believe that as a whole the sign had any connotation apart from that already inherent in the phrase “all dressed up”.

6.  The Applicant appeals against the Registrar’s decision.

II.  DISCUSSION

A.  Is the mark distinctive on its own?

7.  Mr. Kent Yee (appearing for the Applicant) submits that “alldressedup” must be intrinsically distinctive.  This is because (Mr. Yee argues) there is no obvious reason why the words “all,” “dressed” and “up” should all be combined into one phrase. The sign is thus a neologism which is distinct from the common English expression “all dressed up”.

8.  A mark is distinctive if it is capable of signifying to a well-informed consumer that certain goods originate from a particular undertaking. 

9.  Thus, for example, if the mark is generally descriptive of goods within a particular class, so that the mark would not signify to the well-informed consumer that the goods in question come from a particular undertaking, then the mark would not be distinctive. 

10.  A mark (for instance, some word in ordinary use) may start off as lacking a distinctive character.  But the mark may become distinctive over time through becoming closely associated in the public mind with the products of a particular undertaking through (say) widespread advertising and use. 

11.  See British Sugar plc v. James Robertson & Sons Ltd. [1996] RPC 281 (at 305-6); Nestle SA’s Trade Mark Application (Have a Break) [2004] FSR 2 (at §23); and Trade Mark Ordinance s.11(2).

12.  I am unable to accept that the fact that the present mark combines 3 words without break or hyphen is sufficient to endow the sign with a distinctive character.

13.  The European Court of Justice (First Instance, 8th Chamber) in Duro Sweden AB v. OHIM [2009] ETMR 22 (at §52) observed that it was common in English to create words by coupling separate words, often without a space or hyphen in between.  The resulting neologism without more would “not amount to evidence of any creative aspect capable of distinguishing the applicant’s products from those of other undertakings”.

14.  Take, for example, the case where the individual word elements making up a compound expression are each generally descriptive of goods within the class in relation to which registration is sought. 

15.  In such situation, as a general rule (Koninklijke KPNNederland NV v. Benelux Merkenbureau [2006] 1 Ch 1 (at §98)):-

“[m]erely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned”.

16.  Here it is sought to register the mark in relation to classes comprising a wide range of clothing (including accessories such as jewellery and handbags).  If the English expression “all dressed up” is generally descriptive of such goods (as to which see below), the bare fact that the individual words have been combined could not make the resultant expression distinctive of the goods of a particular undertaking.

17.  That is because (as Duro Sweden noted) there is nothing remarkable in English about the coining of new expressions through the combination of words.  Something more is needed to imbue a neologism with distinctiveness.  There must (in the words of Koninklijke) be an unusual variation to syntax or meaning.  Without such variation the neologism would remain generally descriptive of the goods (here, clothing) within the relevant classes.

18.  Thus, in this case, where no empirical evidence has been adduced to show that over time the mark has become closely associated with the Applicant’s goods, it makes no material difference to my decision that the 3 words “all,” “dressed” and “up” have been combined into one.

B.  Is the mark descriptive of goods generally?

19.  I think that this is the real issue in this application.  The question is whether the expression “all dressed up” is generally descriptive of the goods in the classes for which registration is sought.

20.  The Applicant and the Registrar agree that the expression “all dressed up” has the sense of being “properly attired for a particular occasion”.  That connotation (for instance) is played upon in the English saying “all dressed up with no place to go”. That expression posits a situation where one is well-attired but there is no suitable event corresponding to the level of one’s attire which one might attend.

21.  Mr. Yee submits that “all dressed up” would not normally be used to describe the clothing items falling within the relevant classes.  Mr. Yee suggests that the expression is meaningless if one considers clothing alone, divorced from the context of a particular occasion and individual.

22.  Take, for example, beach wear in class 25.  A company executive may be “all dressed up” for a beach party if he wears Bermuda shorts.  But in such attire (Mr. Yee reasons) he would not be “all dressed up” for a company meeting.

23.  Mr. Yee concludes from this that, to the mind of a consumer, the expression “all dressed up” would not connote any particular item of clothing.

24.  I disagree with Mr. Yee.

25.  In my judgment, the expression “all dressed up” purely, simply and directly designates the purpose of the items of clothing within the relevant classes.  If one dons one or more pieces of those items of clothing, one can properly be described as “all dressed up” and that is precisely what the items are intended to make of the person donning them.

26.  It seems artificial to treat the expression “all dressed up” as only coming into play in the context of some particular person on some specific occasion.  I do not think that the notion of “all dressed up” is so confined or complex in everyday understanding.

27.  In fact, the irony in the English expression “all dressed up with no place to go” is that there is no particular occasion.  Despite the absence of an occasion, a person would still rightly use the expression to describe someone (whatever that person’s station in life) as being “all dressed up”.

28.  I conclude that the mark runs foul of the restrictions in s.11(1)(b) and (c).  The mark is not distinctive.  On the contrary, it is generally descriptive of the clothing in the relevant classes.

III. CONCLUSION

29.  The Applicant’s appeal against the Registrar’s decision is dismissed.