136
[No.4]
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[1965]
Chin Chin Trade Mark (Registration)
BOARD OF TRADE
Before G. W.
TOOKEY,
:EsQ., Q.C.
30th September, 1964, and 12th February, 1965
".CHIN CHIN" TRADE MARK
Trade Mark-Official objection--CHIN CHIN-Not adapted to distinguish- 5
Capable of distinguishing-Lapsed registration of label with some wordsRegistration allowed in Part B.
.-An application to register the mark CHIN CHIN in parts A and B of the Register
for alcoholic beverages was refused, the hearing officer finding that the words were
descriptive, having a direct reference to the character of the goods. On appeal, the 10
Registrar did not object to registration in Part E~, having discovered, since his decision, a label bearing the words CHIN CHIN which had been on the Register from
1900 to 1957.
Held, that the words" chin chin" used as a salutation had no particular reference
to alcoholic drinks, so that the mark was not descriptive, but that registration. in ]5
Part A must be refused because the words might legitimately be used in advertising
by other traders and were not inherently adapted to distinguish. The words were
not, however, in such general use as not to be capable of distinguishing. Appeal
allowed as to Part B only.
This 'was an application No. 854,154 by Ronrico Corporation to register CHIN 2.0
CHIN as a trade mark in Class 33 for" wines, spirits (beverages) and liqueurs." The
relevant facts appear from the decision of 30th September, 1964, of the hearing
officer, Mr. D. D. Asprey, which was as follows:
Mr. Asprey.-On the 17th September, 1963, R.onrico Corporation, a Corporation
organised and existing under the laws of the State of Delaware, United States of 25
America, of 201 Tetuan Street, San Juan, Puerto Rico and 229 South State Street,
Dover, State of Delaware, United States of America, manufacturers and merchants,
applied for the registration of a Trade Mark in Class 33 in respect of "Wines,
spirits (beverages) and liqueurs" and, after a hearing, the application was refused.
I am now asked under section 17(4) of the Trade Marks Act, 1938, and Rule 35 30
of the Trade Marks Rules, 1938 (as amended) to state in writing the grounds of
my decision and the materials used in arriving at it. These are given as follows :The mark consists of the words CHIN CHIN in plain block capital letters.
No use of the mark in the United Kingdom before the date of application or any
other circumstances have been brought to my attention, and I have, therefore, 35
only the prima facie case to consider.
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REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[No.4]
Chin Chin Trade Mark (Registration)
Objection was taken to the mark under the terms of paragraphs (c), (d) and (e)
of section 9(1) of the Act on the grounds, respectively, that it is not invented, that
it has direct reference to the character or quality of the goods concerned, and that
it is not distinctive.
The words CHIN CHIN, when hyphenated to the form CHIN-CHIN are
described in Webster's New International Dictionary (3rd Edition, 1961) as "need
to express greeting or farewell," and in the Shorter Oxford Dictionary as "an
Anglo-Chinese phrase of salutation." Further, in the Dictionary of Slang and
Unconventional English, Volume 1 (Eric Partridge, 1961) the phrase CHIN-CHIN
lOis defined as " a salutation; in the 20th Century, a catch-phrase toast."
5
Turning to the objection under section 9(1) of the Act, since the words CHIN
CHIN (the presence or otherwise of the hyphen having in my opinion no material
effect in this respect) are ordinary dictionary words, the mark propounded clearly
does not qualify as " invented" within the meaning of paragraph (c).
15
As regards the objection under paragraph (d) of section 9(1}it is, I think, common
for people who are imbibing, or who are about to imbibe, alcoholic beverages of
the kind for which registration is now sought, to utter some words of salutation
or toast. Words or phrases of this nature are legion: "Cheers,"" Here's how,"
"Down the hatch" are some which, in addition to the phrase the subject of the
20 present application, spring to mind in this context. It seems to me that the mark
CHIN CHIN, as one recorded example of such catch-phrases, has been for a
considerable number of years so closely associated in the public mind with alcoholic
beverages that I have no alternative but to regard it as having a direct reference
to the character or quality of the goods for which registration is sought, and
25 therefore as not qualifying for registration under the terms of section 9(1) (d) of
the Act. Since it is also not "invented " within the meaning of section 9(1) (e)
I must hold that it is not "distinctive" within the meaning of section 9(1) (e) and
so does not qualify for registration in Part A of the Register.
Moreover, since the words which constitute the mark may be used by drinkers as
30 a toast in relation to any form or brand of alcoholic beverage, the mark propounded
cannot, in my view, be inherently adapted to distinguish the wines, spirits
(beverages) or liqueurs of anyone trader. Further it seems likely to me that the
phrase applied for, as well as other well known words of salutation or toast,' will
be used by other traders in alcoholic beverages in advertisements in relation to
35 their goods, and for these reasons also the mark appears to me not to be distinctive
within the terms of section 9(1) (e) of the Act.
As permitted by section 17(3) of the Act, I have carefully considered whether the,
mark is inherently capable of distinguishing the appellants' goods within ·the
meaning of section 10. For the reasons already stated, the mark has in my view,
40 very close and direct reference to the character or quality of the goods concerned.
Further, since in oral use, for example in restaurants and public houses, there
may well be confusion between the mark as a brand name and the form of
salutation with -which the mark is phonetically identical, it seems to me that the
mark has no inherent distinctiveness as a trade mark, and is thus not inherently
45 capable of distinguishing the applicant's goods from similar goods of other traders.
There is also the likelihood that other traders in alcoholic beverages will use, and
should be free to do so, that catch-phrase toast "Chin-Chin" in the legitimate
course of business for example, in advertising matter in relation to their goods.
I therefore consider that the mark does not qualify for registration in Part B of
SO the Register.
138
[No.4]
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[1965]
Chin Chin Trade Mark (Registration)
The application is therefore refused under the terms of section 17(2) of the
Act because the mark propounded fails to satisfy the requirements of section 9
or section 10.
The applicants appealed to the Board of Trade, and the appeal was heard by
G. W. Tookey, Esq., Q.C., G. F. Mathews, (C.P.A.) of Mathews, Haddan & Co., 5
appeared for the applicants Dr.R. G. Atkinson (Assistant Comptroller) appeared
for the Registrar. The decision (dated 12th February, 1965) was as follows.
G. W. Tookey, Esq., Q.C.-This is an appeal to the Board of Trade under
section 17 of the Act from the decision of Mr. D. D. Asprey, acting for the
Registrar, whereby he refused the application on the ground that the mark fails 10
to satisfy the requirements of sections 9 and 10 of the Act.
.
The applicants' mark consists of the words 'CHIN CHIN, and application for
registration was made on the 17th September, '1963~ in Class 33 in respect of
" Wines, spirits (beverages) and liqueurs."
It is clear that the mark does not qualify as an invented word or words, and 15
the question raised by the appeal is whether the Registrar was right in holding that
the 'mark did not qualify for registration in Part A as .words "having no direct
reference to the character or quality of the goods," that it was not" adapted to
distinguish" for the purposes of' a Part A registration, and did not qualify for
Part B registration as a mark" capable of distinguishing."
20
On the question of ,registrability in Part A, the Registrar took the view that
the mark was a " catch-phrase" closely associated in the public mind with a form
of salutation used when imbibing alcoholic drinks, and on this basis he considered
that he had no alternative but to regard the mark as having a direct reference, to
the character or quality of, the goods for which registration is sought. The 25
Registrar referred to three dictionaries in which reference is found to the use of
the hyphenated form" Chin-Chin" as a form of greeting or salutation. It is only
Partridge's "Dictionary of Slang and Unconventional English" which in terms
refers to the words being a "catch-phrase toast." The other references are more
general. I agree with the Registrar that the presence or absence of the hyphen 3~J
is of no significance.
Mr. S. E. Matthews, who argued the appeal on behalf of the applicants, criticised
this finding of the Registrar on the ground that even if it is accepted that the
words Chin Chin are known, or even well-known, as a form of salutation, there is
nothing in th e wdo~dsk or hthehir melanhing which has any l~eference to the character 35
or quality 0 f a rink, w et er a co 0 l.IC or non-a lcoho IC. He, claimed that this
particular form of salutation certainly has no particular reference to alcoholic
drinks. It might be used with any kind of drink, he said, just as the words
" Happy Christmas" might be used.
Dr. R. G. Atkinson, Assistant Comptroller, who appeared on behalf of the 40
Registrar, did not contest the proposition that the salutation" Chin Chin" gave
no indication as to the quality of the drink, but he suggested that there was some
support for the proposition that the mark could be said to have a reference to
the character of the goods, since they were alcoholic in nature and the words
of sa~utation were .more likely to be used on those drinks than' any other kind 45
of drink, Dr. Atkinson at once conceded, however, that his objections did not
139
[1965]
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[No.4]
Chin Chin TradeMark (Registration)
extend sofar as saying that the mark would be unacceptable on PartBof. the
Register, and.to this extent he did not seek to support the decision under appeal
Whilst appreciating this concession, Mr. Matthews asked tbat I should consider
the possibility of allowing a Part ;A registration..
5
Accepting that" Chin Chin" is a known .form of salutation when persons are
drinking together, I do not consider that the words have a direct reference to
the character or quality of goods, and certainly not the particular goods in respect
of which registration is sought. I agree with the contention of the applicants
that form of salutation cannot be regarded as having any particular reference
10 to alcoholic drinks. It may be used whenever a party congregates to drink, whatever the nature of the drink, although it is perhaps right to say that most frequently
people have alcoholic drinks in their glasses on occasions when salutations are
exchanged. If no other considerations had to be taken into account, I would
hold therefore that the words "Chin Chin ''I qualified for Part A registration
15 under section 9(1) (d) as having no direct reference to the character or quality
of the goods.
That, however, is not the only consideration. It was held by the Court of Appeal
in the case of Fanfold's Application (1928) 45 R.P.C. 325 that for any Part A registration under section 9 the proposed mark must be distinctive, that is to say adapted
20 to distinguish, notwithstanding that the mark falls within one of the paragraphs (a)
to (d) of section 9(1). The Master of the Rolls (Lord Hanworth) drew attention
to the opening words of paragraph (e)-" any other distinctive mark" which indicates that distinctiveness is an essential for marks falling within any of the paragraphs. When the Registrar is considering the registrability of a new mark in the
25 absence of evidence of distinctiveness he has of course to consider whether the mark
is inherently distinctive, that is to say, inherently adapted to distinguish.
Having regard to the fact that" Chin Chin" is or may be used as a salutation in
connection with drinking and, as the Registrar has justifiably said in his decision,
may be legitimately referred to as such in advertisements by other traders, I agree
30 with the conclusion that it cannot be said that the words are inherently adapted to
distinguish. I feel the same kind of difficulty with this mark in relation to Part A
as I would, for example, if I had to consider a proposed mark which consisted of
the words referred to by Mr. Matthews, viz. "Happy Christmas." Having regard
to the very general use made of that phrase in trade at a particular season of the
35 year, although not with reference to any particular kind of goods, the words could
not be regarded as inherently adapted to distinguish any particular trader's goods.
In such a case, moreover, a registration might be a considerable and unjustifiable
embarrassment to traders as regards use of the words in a way which was not
intended to import any trade mark signification whatsoever. As regards "Chin
40 Chin," however, it is right to say that it has not been established that the words are
in such general or universal use as a salutation that they could never become distinctive as a trade mark, and I consider that Dr. Atkinson's concession as regards registration in Part B is entirely justified.
The view that an acceptance for registration in Part B should be allowed is to
45 some extent reinforced by the fact that, as Dr. Atkinson has found since Mr.
Asprey's decision was given, a label bearing the words " Chin Chin " as a prominent
feature was on the Register for over fifty years in Class 43 (fermented liquors and
spirits). The registration was No. 234,670 dated 5th December, 1900. Although the
registration lapsed in 1957, and of course no investigation has been made as to any
140
[No.4]
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[1965]
Chin Chin Trade Mark (Registrations
circumstances of its use" or as to any rights arising out of such use, its long period
of registration does suggest at least a capacity for the words" Chin Chin" to become
distinctive in connection with the goods in which the applicants are interested.
In the result, therefore, I uphold the decision of the Registrar as regards refusal
of registration in Part A, although not entirely on the same grounds, and I decide, 5
as the Registrar now concedes, that the mark should,be accepted for registration in
Part B, and on this basis the appeal succeeds.
I.A.
Wt.8330 5/65 EGE