TRADE MARKS ORDINANCE (Cap. 559)
APPLICATION NO.: 300007181
MARK:
CLASS:
36
APPLICANT:
THE PRUDENTIAL ASSURANCE COMPANY LIMITED
________________________________________________________________________
STATEMENT OF REASONS FOR DECISION
Background
1. On 16 April 2003, the Prudential Assurance Company Limited of London, U.K.,
applied to register the mark
559) (“the Ordinance”).
under the Trade Marks Ordinance (Cap.
2. The services for which registration is sought under Class 36 are as follows:
“insurance; assurance; financial services; unit trust services; real estate agency
services, management, administration and valuation services; financing and
procurement of financing; loan advice; loan procurement; capital administration
services; property administration and advice; financial administration services;
actuarial services; mortgage, banking, investment management, trustee and
financial advisory services; nominee services; provision of finance; financing
services for securing of funds; pension fund administration; services for the
financing of home loans; valuation of chattels; deposit taking services; funds
transfer services; brokerage agencies for insurance and credit; financial services
relating to lotteries; handling subscriptions and offerings of securities; credit
sales; guarantees and sureties; accommodation agencies and agencies for the
recovery of debts; real estate agency services; financial reports; deposits, credits
and savings societies; management of wealth; financial management
consultancy and administration services; information and advisory services
relating to the above services.”
3. At the examination stage, objections were taken under sections 11(1)(b), (c) and (d)
of the Ordinance but subsequently the section 11(1)(d) objection was waived by the
Registrar in its letter of 13 September 2004.
4. The applicant requested a registrability hearing which took place before me on 1
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December 2005.
Lovells.
The applicant was represented by Mr Henry Wheare of Messrs
5. On 26 November 2005, the applicant filed skeleton arguments together with a
statutory declaration of Mr Henry Wheare declared on 25 November 2005 (‘the SD’).
The SD included information concerning foreign registrations of the subject mark
(Exhibit A), trade mark legislation of certain foreign countries (Exhibit B), materials
documenting the origin and history of the subject mark (Exhibit C), information on
the applicant’s “Prudence” products (Exhibit C), copies of advertisements and
website pages showing use of the mark by the applicant (Exhibit D) and examples of
other marks on the Register (Exhibit E).
6. At the hearing, I understood from Mr Wheare that the purpose of the evidence is two
fold. Firstly, Exhibits A to E were filed to support the applicant’s prima facie case
for registration and secondly, the applicant also sought to rely on Exhibits C and D to
establish that the mark has acquired distinctiveness as a result of the use made of it
under section 11(2) of the Ordinance.
7. I reserved my decision at the end of the hearing.
Trade Marks Ordinance
8. The absolute grounds for refusal of an application for registration are contained in
section 11 of the Ordinance. Section 11(1) 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) …………”
9. Notwithstanding the prohibitions against registration set out in section 11(1)(b), (c)
and (d), section 11(2) provides as follows:
“(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.”
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Decision
Prima facie case
Section 11(1)(c) of the Ordinance
10. Upon review of the matter, the objection under section 11(1)(c) of the Ordinance is
waived.
Section 11(1)(b) of the Ordinance
11. Section 11(1)(b) precludes from registration signs which are devoid of any distinctive
character.
12. The test for distinctiveness was laid down by Mr. Justice Jacob in British Sugar Plc v
James Robertson and Sons Ltd [1996] RPC 281 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?”
13. The approach of assessing distinctiveness was further discussed in Nestle SA’s Trade
Mark Application (Have a Break) [2004] FSR 2:
“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.”
14. Mr Wheare submitted that a minimum degree of distinctive character is sufficient to
render inapplicable the ground for refusal set out in section 11(1)(b), and he referred
to Eurocool Logistik GmbH v OHIM (EUROCOOL) (Case T-34/00), paragraph 39, in
support of his argument. However, it is clear that whether the required degree of
distinctiveness is described as minimal or otherwise, a mark must as a whole perform
the essential function of distinguishing the applicant’s goods or services from those
having a different commercial origin (EUROCOOL, paragraph 51).
15. Applying the above legal principles, distinctive character means, for all trade marks,
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that the mark must be capable of identifying the goods or services as originating from
a particular undertaking, and therefore distinguishing it from those of other
undertakings. The distinctiveness of the mark has to be assessed in relation to the
goods or services for which the applicant seeks registration, taking into account the
presumed perception of the relevant consumers.
16. The mark comprises of the word “PRUDENCE” in plain block capitals. Mr Wheare
referred to the following entry in the Shorter Oxford English Dictionary:
“prudence n. The quality of being prudent. The ability to discern the most suitable,
politic or profitable course of action, especially as regards conduct; practical wisdom,
discretion; and instance of this; a prudent act. Wisdom, knowledge or skill in a matter.”
17. It was Mr Wheare’s submission that “prudence” was not a generic or usual phrase
used to identify or distinguish the applied for services. He submitted that the word
“prudence” did not tell customers what the applied for services were nor did it
describe them. Mr Wheare argued that the average consumer did not refer to
insurance, financial or any particular services as “prudence” services. Consumers
would not on seeing the mark “PRUDENCE”, think of financial or insurance
services.
18. However, the test of a mark’s distinctiveness is not whether an average consumer
would know what the services are. The issue is whether the mark when used in
relation to the services applied for serves to indicate the trade origin of the services.
In respect of the applied for services in Class 36, the mark “PRUDENCE” conveys an
immediate message that the applicant would exercise prudence in providing such
services. It merely informs consumers that the applicant offers financial, insurance
and investment management services etc. with prudence. Alternatively, the mark
indicates that a consumer acts with prudence in taking up such services from the
applicant.
19. “Prudence” is an ordinary English word. Its meaning is direct and obvious and
would be well understood by the public. It is the kind of word that is apt for use in
the field of insurance, financial and investment management services because these
are services in which the exercise of prudence is an essential attribute and a desirable
quality. Moreover, any service provider in this field would like to highlight to target
consumers that they are acting with prudence by selecting his services.
20. Mr Wheare submitted that since the word “Prudence” can have more than one
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meaning, it is not devoid of any distinctive character. Mr Wheare said that apart
from its ordinary dictionary meaning, the word “Prudence” could be seen by relevant
consumers as a woman’s name. At the hearing, he drew my attention to
google.com.hk and yahoo.com.hk search of all Hong Kong websites to illustrate that
“Prudence” was predominantly recognized as a woman’s first name or a personal
name and he submitted that the Registrar had selectively based his objection on the
non-personal name sense of the word “prudence”.
21. As indicated in paragraph 15 above, assessment of the mark must be made on the
basis of how the average consumer would perceive the mark by reference to the
services for which registration is sought. I do not think that a reasonably well
informed, and circumspect consumer would, on seeing the mark used in relation to,
namely, the insurance, financial and investment management services applied for,
perceive the mark as a woman’s first name or personal name. Rather, the average
consumer is likely to perceive the mark as a reference to the applicant’s quality of
being prudent; practical wisdom, discretion in providing the specified services, or as
an indication of the customer’s quality of being prudent; ability to discern the most
suitable or profitable course of action and wisdom in taking up those services from
the applicant. Therefore, the perceptions and recollections that the word would
trigger in a consumer’s mind are likely to be origin neutral. Using the words of
Jacob J. in British Sugar Plc v. James Robertson & Sons Ltd., the subject mark cannot
do the job of distinguishing without first educating the public that it is a trade mark.
22. Mr Wheare also explained that the mark “PRUDENCE” actually symbolizes the
applicant’s distinctive “Face of Prudence” logo. At the hearing, he gave an account
on the applicant’s reasons for adopting the mark and he referred me to some pictures
in Exhibits C and D showing the applicant’s “Face of Prudence” logo. According to
Mr Wheare, the mark “PRUDENCE” in fact derives from the female personification
of the cardinal virtue Lady PRUDENCE which the applicant has used as its corporate
logo since 1848. Moreover, he informed me that the applicant’s current corporate
logo was established in 1986 which is of a stylized version of “PRUDENCE” and is
commonly referred to as the “Face of Prudence” logo. Furthermore, Mr Wheare
explained that the applicant’s name “Prudential” also has its origin in “Prudence”.
23. Nonetheless, the mark is not to be assessed on the basis of its historical origin or the
applicant’s subjective intention in adopting the mark. As mentioned in the
preceding paragraphs, the mark has to be considered from the perspective of an
average consumer who is reasonably informed and observant and in the context of the
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services applied for. In my view, such average consumer is unlikely to perceive the
mark as referring to Lady PRUDENCE but is most likely to perceive the mark as
conveying that the applicant would exercise prudence in providing such services, or
indicating that a consumer acts with prudence in taking up those services from the
applicant.
24. For reasons stated above, I find that the subject mark is unlikely to be perceived by
consumers as an indication of trade origin of the applied for services, and it is
therefore devoid of any distinctive character under section 11(1)(b) of the Ordinance.
References to Internet websites
25. Mr Wheare submitted that since the Internet website references referred to in the
examination of the application were mostly overseas websites, they should not be
determinative of how the targeted Hong Kong public would view the mark. Mr
Wheare also made reference to Chapter 6.10 of the UK Trade Marks Registry Work
Manual in relation to the use of the Internet by examiners and submitted that the
Hong Kong Registry should adopt a similar approach as in the U.K. Trade Marks
Registry.
26. In the examination stage, objection was also initially taken under section 11(1)(d) of
the Ordinance on the ground that the mark consists exclusively of a sign which is
commonly used in trade. Against this background, the examiner referred to those
Internet websites references to illustrate that “prudence” was a word commonly used
in the finance business. However, I note that the section 11(1)(d) objection had
already been waived by the Registrar in its letter of 13 September 2004, and since the
Internet website references are not the basis upon which the section 11(1)(b)
objection is based on, I do not find the submissions put forward by Mr Wheare of
relevance to my determination of the present application.
Reference to other registered marks on the register and foreign registrations
27. I take note of Mr Wheare’s submissions and printouts in relation to two registered
marks on the register. However, it is well established that each case must be
considered on its own merits and not by reference to other marks that have been
judged registrable on other occasions. In British Sugar Plc v James Robertson &
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Sons Ltd [1996] RPC 281 at 305, Jacob J said that “It has long been held under the
old Act that comparison with other marks on the register is in principle irrelevant
when considering a particular mark tendered for registration, see e.g. MADAME
Trade Mark and the same must be true under the 1994 Act. I disregard the state of
the register evidence.”
28. Mr Wheare submitted that the subject mark has been accepted for registration based
on a prima facie case in a number of jurisdictions including Singapore, New Zealand,
India, South Africa, Brunei and as a Community Trade Mark. He explained that
since the mark was accepted for registration in those countries based on a prima facie
case, there was no written decision explaining the reasons for the acceptances. He
referred to Exhibit A which consists of copies of correspondence between the
applicant and the relevant registries concerning the applicant’s foreign trade mark
applications.
29. It was also Mr Wheare’s submission that since the criteria for registration contained
in the Community Trade Mark Regulation and the trade mark legislation of Singapore,
New Zealand and India are essentially identical to those contained in the Ordinance,
the foreign acceptances should be persuasive in Hong Kong. In particular, my
attention was drawn to the circumstances leading to the acceptance of the subject
mark in South Africa.
30. In administering our trade mark laws, it is common for the Registrar to make
reference to court decisions as well as registries’ decisions in other jurisdictions.
This was the practice under the repealed Trade Marks Ordinance (Cap. 43) and is still
the case under the current Ordinance. Having said that, it is important to note that
the reference value of different practices and decisions might differ. The Registrar
is under an obligation to administer the trade mark laws in accordance with the
Ordinance and in a fair and reasonable manner. He should not simply follow an
overseas decision without due regard to the issues considered by the overseas
authorities as well as the rationale behind such decision. For this reason, the
Registrar would place more weight on those decisions in respect of which written
grounds of the decisions are available to him.
31. I agree with Mr. Wheare that the subject mark appeared to sail through to acceptance
in the European Community, Brunei, Cambodia, Indonesia, Laos, Liechtenstein,
Malaysia, Mongolia, Myanmar, PRC, Singapore and Vietnam without objection.
However, the fact remains that the information available does no more than show that
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the subject mark was accepted prima facie. I am unable to ascertain the reasons and
rationale behind the acceptances. Further, I note that the subject mark is accepted in
New Zealand on condition that the mark is “being used by the proprietor” and the
registration in India is accepted on the basis of “advertised before acceptance under
section 20(1) proviso”. I therefore consider that the New Zealand and Indian
registrations are of little assistance to the subject application.
32. Turning to the acceptance of the mark in South Africa, I note Mr Wheare’s
submission that the applicant successfully overcame the association requirement
prescribed in the Trade Marks Act of South Africa on the basis that the word
“PRUDENCE” is generally used as a female name. In my view since there is a
considerable difference in the trade mark law between South Africa and Hong Kong,
I am not convinced that the acceptance of the mark in South Africa is persuasive in
Hong Kong.
33. Mr. Wheare quoted an observation in Kerly’s to support his submission that the Hong
Kong Registrar should take into account decisions of registries with rigorous
examination procedures. However, it is important to read the observation in the
context of the relevant paragraph concerning Community Trade Marks. In
paragraph 8-150 the authors discuss the relevance of registrations of the same mark in
other EU countries in the following manner:
“The [OHIM] Examination Guidelines take a sensible approach, suggesting that weight may
be given to registration in countries which are known to operate reasonably rigorous
examination of applications, such as the United Kingdom, and this does occur in practice.
More often than not, the existence of registrations in other countries is treated as insufficient
to overcome the reasoning already expressed, particularly where no information is supplied
concerning the circumstances or criteria taken into account which lead to the registrations in
question. Even if a national trade mark office has held a mark to be sufficiently distinctive to
warrant registration, the Boards of Appeal have stated that the same finding does not
necessarily have to be reached by the examiner ‘who must in each case make his own
assessment as to the existence of absolute grounds for refusal.’ ”
34. National trade mark rights are territorially limited and granted independently of each
other. The bare fact of registration in other countries is not sufficient to establish
that a sign is eligible for registration here (Automotive Network Exchange Trade Mark
[1998] RPC 885). The Registrar is entitled to assess the meaning and significance
of the given sign according to the circumstances prevailing in his own territory, it
being recognized and accepted that assessments of such matters are liable to vary as a
result of linguistic, cultural and social differences between territories (“Cycling IS …”
Trade Mark Applications [2002] RPC 37). Notwithstanding that the mark in
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question may be registrable elsewhere, it does not necessarily follow that the mark is
also registrable in Hong Kong at least on a prima facie basis.
35. To conclude on this issue, I have taken account of the overseas acceptances of the
subject mark in assessing the present application. Nevertheless, the bare fact of
registrations, without more, is of limited assistance to this case. The Registrar has
an obligation to make his own assessment on the registrability of a mark submitted
for registration. Where there are valid reasons for refusal of a mark under the
provisions of the Ordinance, it would not be right for me to place any great weight on
the fact that the mark was accepted for registration in those foreign jurisdictions.
Acquired distinctiveness
36. In an attempt to overcome the section 11(1)(b) objection, Mr Wheare sought to rely
on Exhibits C and D to establish that the mark has acquired distinctiveness through
use. Having carefully considered the evidence, I am of the view that the evidence
does not in its totality establish that the mark has in fact acquired a distinctive
character as a result of the use made of it under section 11(2) of the Ordinance.
37. The majority of the evidence does not show use of the mark in Hong Kong in relation
to the applied-for services before the date of application for registration. The ‘Fact
Files’ in Exhibit C and the advertising flyers and advertising reports in Exhibit D do
not reveal Hong Kong use. The website pages in Exhibits C and D are after the date
of application and do not indicate Hong Kong use either.
38. Moreover, I note that information on the scale and extent of the sales figures and
advertising activities was not available and no evidence was adduced to show that the
mark was applied on the range of services covered in the specification. In the
circumstances, I am not persuaded that the evidence filed satisfies the requirement
under section 11(2) of the Ordinance.
Conclusion
39. I have considered all the documents filed by the applicant and all the submissions
made by Mr Wheare and the authorities submitted by him in relation to this
application. For the reasons stated above, I find that the mark is devoid of any
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distinctive character within the meaning of section 11(1)(b) of the Ordinance based
on the prima facie case. Furthermore, I am not satisfied from the evidence filed by
the applicant that the mark has in fact acquired a distinctive character for the purpose
of section 11(2). I therefore refuse this application under section 42(4)(b) of the
Ordinance.
Jessica Law
for Registrar of Trade Marks
17th May 2006
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