JMTM, INC. v. REGISTRAR OF TRADE MARKS

HCMP 1126/2008

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 1126 OF 2008

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J U D G M E N T

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1.  “Smoking is hazardous to health”, so says the Sergeant General in America. 

2.  In the wake of all the disputes between tobacco companies and other scientific research, I think the matter is quite settled now.  Cigarette will cause lung cancer, and cigar and tobacco will cause naso-pharengial cancer (NPC).  But of course the line of result is not so distinct : there are people who smoke cigar and tobacco who eventually would have lung cancer and those who smoke cigarette would have both NPC and lung cancer.  In the wake of this, we need government interventions and statutory protections.  Smoking (Public Health) Ordinance, Cap.371 first came into effect in the year 1982, but then the most recent amendments Ordinance 21 of 2006 came as a result of WHO Framework Convention to Tobacco Control 2005; and to be exact, it came from the Geneva Extract Article 11.

3.  Today we are dealing with a cigar and tobacco brand called Middleton’s Black & Mild.  The Registrar of Trade Marks rejected the registration on the simple ground that the word “Mild” is deceptive to the public.  The word “Mild” denotes :

“1.   : gentle in nature or behavior;

2a(1)  : moderate in action or effect,

    (2)  : not sharp, spicy, or bitter;

2b       : not being or involving what is extreme,

3.        : not severe.”

4.  The Registrar notified the applicant herein by a letter dated 25 October 2007 and her Decision in her Statement of Reasons came in 2008.  Against that Decision, the applicant appealed to this court and submitted that the Registrar erred in three respects.

5.  First, the applicant submitted that there is no consideration of the mark “as a whole”.  “As a whole”, its says Middleton’s Black & Mild.  The first word is generic.  It is not deceptive.  It is Middleton’s as the name of the manufacturer.  The second word “Black” is descriptive but it is not descriptive of the effect of the product.  It is descriptive as a kind of colour, as a kind of shades between black and white, but according to the applicant, it is a description of the grade.  The third word is another descriptive name and it is not generic.  It has the same description as I have said just now. 

6.  The consideration is : how could the two words “Middleton’s” and “Black” minimize the effect of the word “Mild”?  Whoever construes the three words together as a whole would have to consider the word “Mild” and its effect.  The Registrar cannot be blamed for taking the word “Mild” and give its true meaning and effect and came to the conclusion that it will be deceptive to the general public as a whole, because the word “Mild” would give the general public an impression that this product is not severe, it is just gentle and moderate in action or effect.  The word “Mild” cannot be said to be descriptive only of its flavour as submitted by the applicant’s counsel, Mr John Yan S.C.  As a whole, it cannot be said that the general public cannot be deceived.  In fact the general public would be deceived by the word “Mild”. 

7.  In the past, tobacco companies in the States and elsewhere had conducted a number of so-called “scientific” researches.  For example, tobacco company took some people who have smoked for years, say, from the age of 12 to 16 and reached the age of 90; they did not have lung cancer nor NPC and they just died of natural cause.  There are quite a number of people who the tobacco company could gather and then draw the conclusion that smoking is not hazardous to health.  Eventually scientists discovered that such people actually have a gene which is resistant to the effect of tobacco nicotine, and the result is not scientific at all because :

(1)  they do not have random sampling;

(2)  they have no control sample; and

(3)  the result is not statistically significant.

It has been said that tobacco company is a deceptive industry, and I do not think this is an understatement or an exaggeration.  But be that as it may, we cannot take it as a similar evidence and take it against the applicant today.  Taking the three words together, it must have its material effect or kind of material misrepresentation from the tobacco company.

8.  The second submission which was so ably presented by the applicant’s counsel and that is : cigar and tobacco are different from cigarette.  But the short answer to that is cigarettes are just made from tobacco.  It may have different kinds or different behaviour or conduct in smoking.  It has been said that in smoking cigar and tobacco will just inhale to your throat and not further down into the lung whereas in smoking cigarette you inhale everything down to your lung and the two different kinds of effect in terms of cancer, as I have said earlier, will be exhibited at a later stage of the smoker’s life.

9.  Be that as it may, one cannot say that because Middleton’s Black & Mild’s supplies cigar and tobacco, and not cigarette, and therefore the website on cigarette is not applicable to cigar and tobacco.

10.  In respect of cigarette, much has been said of its effect of the word “Mild”.  To my mind the same effect would affect the general public.  It has also been said that consumers nowadays are logical, educated people and they would understand the word “Mild” does not refer to its effect but to the flavour as suggested by the applicant.  As a whole, if the consumers are logical and clearheaded persons, we do not need any statutory intervention and the government’s statutory provisions to protect the general public.

11.  The Registrar of Trade Marks in a sense is a gate-keeper, and he should not allow any marks to be registered which have the effect of deceiving members of the public.  To my mind the Registrar is perfectly entitled to refuse the registration because consumers would perceive the word “Mild” as having less or gentle effect on them. 

12.  For the aforesaid reasons, the appeal by the applicant’s notice of motion is dismissed with costs to the respondent, to be taxed if not agreed.