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NAKED a Descriptive trademark for Condoms? The Hong Kong Experience

Descriptive Trademarks are Generally Popular Among Business Owners

In the sizzling world of trademarks, selecting the perfect brand name is akin to concocting a tantalizing recipe for success. Picture yourself embarking on a culinary adventure, envisioning a restaurant that will tantalize taste buds and leave patrons clamoring for more. It’s natural or almost a knee-jerk action to gravitate towards names like “Tasty” or “Delicious,” as they effortlessly convey the mouthwatering allure of your culinary creations. However, as many others would like to adopt Tasty, whether for trademark purposes or simply to describe their culinary offerings, descriptive marks are typically disallowed.


NAKED Case in Hong Kong highlighted the Difficulties in Determining Descriptiveness

This is however not always straight-forward to determine whether a trademark is descriptive or not. A landmark case from Hong Kong provides a tantalizing glimpse into the realm of trademark law. Though it occurred over a decade ago, its significance remains undiminished, standing as one of the most influential decisions in Hong Kong’s legal history. However, this article won’t go into the details of the case’s journey all the way from the Trademarks Registry appeal to the Court of Appeal. Instead, our focus lies on the trademark itself, highlighting its playful nature and shedding light on the nuances of trademark laws.


Case Background

We assume that many of our dear readers have had experience using condoms. What brands stand out to you as the best in your experience? Why do you prefer these brands? Please share your honest thoughts with us. Now, consider one brand that likely catch your eyes: “NAKED”. Quite cool, isn’t it? But let’s pause here and ponder: When applied to condoms, does it merely describe the state of undress or does it whisper secrets of sensuality and intimacy?

The examiners at the Hong Kong Registry issued official objections against the “NAKED” application. Well, if you’re fond of the name “NAKED,” the Registry’s objections may not be entirely unwarranted. After all, the sensation of feeling “NAKED” while wearing a condom is arguably one of its most desirable features. Refusing to accept the Registry’s stance, the applicant fervently contested the decision and escalated the matter to the High Court of Hong Kong, determined to prove the distinctiveness of the “NAKED” brand.

Suggestive or Descriptive

Guess what? The Court sided with the applicant, marking a triumph for the “NAKED” brand. Applying the case laws, the court introduced the concept of a sliding scale, offering a practical approach to trademark evaluation. At one end lies descriptors, warranting refusal of registration, while at the other end sit suggestive marks, eligible for registration. This added complexity to the evaluation process, highlighting the importance of assessing how easily customers can grasp the meaning behind a mark, i.e. the mental steps gone through by the customers in this decoding exercise.

In this scenario, firstly, we must grasp the essence of “NAKED,” and secondly, acknowledge the paradox that arises when considering the usage of the term in conjunction with condoms. Although wearing a condom technically negates the state of being “NAKED,” after all the question arises whether it is a conventional practice to associate “NAKED” with condom usage or its inherent characteristics. Thirdly, despite the inherent contradiction, the evocative sensation of nakedness when using the product leads us to associate “NAKED” with the distinctive attributes of the condom, thus enhancing the customers’ affinity towards the brand. Quoting the judge’s eloquent expression, ” One might… imagine that 2 persons who wish to engage in safe sexual intercourse would desire to have as much intimate physical contact with each other while nonetheless protecting themselves by using a prophylactic device.  The less obtrusive the condom as a result of its attributes (including sheerness, colour, weight and comfort), the more exposed and uncovered each person would feel before the other. Accordingly, some possibly desirable attributes of a condom can be suggestive of nakedness, while the state of nakedness itself may suggest attributes which would be desirable in a condom.” The judge however concluded that “one would need something of the mind of a puzzle enthusiast or (possibly) a poet to perceive the relationship between “nakedness” and the characteristics of a condom.

What are your thoughts on NAKED case?

The decision was finally reversed in the Court of Appeal mainly for technical reasons, which is not discussed here. Anyway, what are your thoughts on this matter? We are inclined to advocate for a more lenient approach from trademark authorities towards “play of words” trademarks. These trademarks often showcase a remarkable level of creativity and ingenuity, injecting a touch of wit and charm into the marketplace. By embracing these inventive trademarks, the Trademarks Registry can foster a more vibrant and dynamic business environment. Furthermore, we argue that granting approval to such trademarks does not unfairly disadvantage third parties. In fact, it encourages healthy competition and promotes innovation within industries. Instead of stifling creativity, trademark authorities should recognize and celebrate the imaginative efforts of entrepreneurs and businesses. In essence, we believe that trademark authorities should act as champions of creativity, paving the way for unconventional yet captivating trademarks to flourish. After all, it’s these bold and inventive trademarks that inject excitement and intrigue into the world of commerce, capturing the imagination of consumers and setting brands apart in a crowded marketplace.

What Should You Know from the NAKED case?

So, what are the implications for you? If you prefer to avoid the hassle of lengthy disputes with the Registrar and want to save both time and costs, it’s advisable to opt for a simple and non-descriptive mark. For example, choosing a mark like “XTX” for your restaurant services is less likely to draw official objections or opposition from third parties. However, if you’re determined to secure playful and imaginative trademarks, it’s essential to enlist the expertise of professional agents like Trasomark who can craft compelling rebuttals on your behalf. Their expertise and strategic approach could yield significantly different outcomes, potentially securing approval for your desired trademark. Stay tuned!

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