Invalidation of the “平安鐘” trade mark: how to avoid similar pitfalls?

image_pdfimage_print

Introduction

Since 1996, the Senior Citizen Home Safety Association (the “SCHSA”) has provided a kind of emergency call service commonly known as the “平安鐘” service, catered to the elderly who require urgent assistance (the “Service”). The SCHSA applied for and successfully registered the “平安鐘” trade mark in Hong Kong on 7 February 2011 after becoming aware of increasing instances of fraudsters using the “平安鐘” trade name to steal elderly’s personal data or to provide inferior services, damaging the reputation of SCHSA and endangering the elderly. However, the popularity of the “平安鐘” service led to Chubb Hong Kong Limited (“Chubb”) to file an invalidation application against the “平安鐘” trade mark such that the “平安鐘” trade mark may be used by other companies to provide similar services to the elderly. On 20 July 2017, the Registrar of Trade Marks (the “TMR”) declared the “平安鐘” trade mark invalid under section 53(3) of the Trade Marks Ordinance (Cap. 559 of the Laws of Hong Kong) (the “TMO”).

Background

The “平安鐘” service was previously known by various different names, including “救助鐘”,“求救鐘” and “一線通呼援鐘”. SCHSA officially rebranded the safety bell service to “平安鐘” in or about early 1997 and applied for registration of the “平安鐘” mark on 24 July 2009. The “平安鐘” mark was accepted as a result of distinctiveness acquired through use under section 11(2) of the TMO and registration was officially granted on 7 February 2011.

After the registration of the “平安鐘” trade mark, SCHSA issued cease and desist letters to other entities regarding their use of the “平安鐘” trade mark. Chubb was one of such entities who received SCHSA’s cease and desist letter. Chubb subsequently filed with the TMR an application for a declaration of invalidity of the registration of the “平安鐘” trade mark under the TMO on 4 September 2012.

SCHSA and Chubb’s Arguments

The hearing took place on 8 February 2017. Chubb relied on sections 11(1)(b) – (d) of the TMO and its arguments may be summarised as follows:

  1. The “平安鐘” trade mark is an ordinary or generic name for the Service;
  2. The “平安鐘” trade mark consists exclusively of signs which have become customary in the current language or in the honest and established practices of the trade; and
  3. The “平安鐘” trade mark is descriptive of and is devoid of any distinctive character in respect of the Services.

SCHSA denied that the “平安鐘” trade mark is a generic term for the Service and claimed that any objection under sections 11(1)(b), 11(1)(c) and/or 11(1)(d) of the TMO can be overcome if:

  1. The “平安鐘” trade mark has acquired a distinctive character as a result of the use made of it before the filing date on 24 July 2009; or
  2. The “平安鐘” trade mark has acquired a distinctive character after the filing date on 24 July 2009 in consequence of the use that has been made of it.

TMR’s Ruling

What does “devoid of distinctive character” mean under section 11(1)(b) of the TMO?

Section 11(1)(b) of the TMO bars the registration of a mark which is devoid of distinctive character unless it has in fact acquired a distinctive character before the date of application for registration as a result of the use made of the mark. In determining whether a mark is “devoid of distinctive character”, the TMO requires consideration of the mark on its own, assuming no use. The distinctiveness to be considered is that which identifies a product as originating from a particular undertaking and thus distinguishing such product from those of other undertakings.

What kind of signs does section 11(1)(c) of the TMO prohibit from being registered?

Section 11(1)(c) of the TMO provides that 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 are not to be registered. Section 11(1)(c) pursues an aim which is in the public interest, namely that such descriptive signs or indications may be freely used by all and should not be reserved to one undertaking alone.

What kind of signs does section 11(1)(d) of the TMO prohibit from being registered?

Section 11(1)(d) of the TMO prevents the registration of signs which have become customary in the current language or in the honest and established practices of the trade and cannot serve the function of distinguishing the goods or services of one undertaking from those of other undertakings.

The decision

The TMR noted that the “平安鐘” trade mark, as at the filing date on 24 July 2009, has already become customary in the current language and in the honest and established practices of the trade to denote the kind of emergency call service provided by SCHSA. For example, the service provided by St. James Settlement was called “平安鐘”, and in the January 2000 issue of the “CHOICE” Magazine, contact telephone numbers for three providers of “平安鐘” services were set out. As such, the average consumer of such emergency call service would likely perceive the “平安鐘” trade mark as a generic sign designating the kind of goods and services provided by different service providers rather than serving as a badge of origin. The “平安鐘” trade mark is hence devoid of any distinctive character and registration of “平安鐘” trade mark is contrary to section 11(1)(b) of the TMO.

Although the TMR allowed the “平安鐘” trade mark to be registered on the basis of evidence filed at the examination stage, registration of a mark is merely prima facie evidence of validity of the registration. Chubb, by the invalidation application, challenged the validity of the registration of the “平安鐘” trade mark and, with the TMR considering the evidence filed by both Chubb and SCHSA, the TMR cannot come to a conclusion that as at the filing date on 24 July 2009, the “平安鐘” trade mark had acquired a distinctive character as a result of the use made of it. Therefore, registration of the “平安鐘” trade mark was declared invalid under section 53(3) of the TMO, on the ground that the “平安鐘” trade mark was registered in contravention of section 11 of the TMO.

Implications

This case serves as a reminder to trade mark owners that, even after registration of a trade mark, one needs to regularly check for possible infringement of one’s own trade mark and to take action, namely, trade marks owner should also be wary and prevent its trade mark from being used as a generic word, as the trade mark could then lose its entitlement to protection.

To avoid being challenged after registration, it is important to (a) make sure that the design of the mark or series of mark is with strong distinctive elements and (b) devise filing strategies in order to defend against any possible subsequent challenges. To ensure maximum protection, pre-filing legal advice should be sought.

 

For enquiries, please contact our Intellectual Property & Technology Department:

E: ip@onc.hk                                                                        T: (852) 2810 1212

W: www.onc.hk                                                                    F: (852) 2804 6311

19th Floor, Three Exchange Square, 8 Connaught Place, Central, Hong Kong

Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.

Published by ONC Lawyers © 2017