"YUPIN & Device"

Hong Kong
- Acquisition of Rights and Registrability

Guangdong Foodstuffs Import & Export (Group) Corporation ("applicant") applied for the trademark "YUPIN御品and star device" under application no. 10300 / 1999. The Applicant claimed alcoholic beverages (except beers) in class 33. The mark consisted of two Chinese characters "御品" and the word "YUPIN" which was phonetically equivalent to the Chinese characters in the national dialect Putonghua. The two Chinese characters were also presented in an octagonal shaped device and were considerably larger than the word "YUPIN".

The Registrar was not prepared to accept the combination mark for registration in either Part A or Part B. She objected that the first Chinese character of the mark "御" stood for "imperial" which meant "of a superior size or quality" and the second character "品" stood for "quality" which was indistinctive. Hence, the Chinese characters "御品" as a whole were regarded as referring to "imperial quality". The composite mark was regarded as being descriptive of the goods that the applicant claimed.

The applicant did not agree and contested the objection by filing a statutory declaration claiming use of the mark since 1995. Samples of advertisements were also exhibited as evidence. The Applicant further asserted that the mark had been successfully registered in Part B in class 29 claiming canned food. However, the Registrar considered that the evidence was not satisfactory on the basis that the applicant did not produce relevant advertising expenditure and the advertisement that it produced did not relate to alcoholic beverages but only related to canned food.

The applicant requested a hearing on the registrability of the mark. At the hearing, the applicant argued that the mark "YUPIN御品" meant "fit for a king or royal family". The words did not strictly refer to the quality of the product nor was it something that the royal family would consume. Moreover, the applicant submitted that the identical mark was registered in Part B in class 29 for foodstuffs so it should be accepted in class 33 as they claimed goods of the same description.

The Registrar maintained her objection. The applicant requested a statement of the ground of the Registrar's decision. [Most applicants' are reluctant to make such a request since the written opinion would then be available for all competitors to see and review. This can have negative consequences for the strength of the mark - editor]

The Registrar was not satisfied with the evidence of use produced by the applicant on the basis that it only related to canned food. In reviewing the statutory declaration, the applicant confirmed that it intended to but had not yet used the mark on alcoholic beverages.

The Registrar further considered that the mark "御品" had a clear and direct reference to the goods claimed. It meant that the alcoholic beverages were of a very superior quality as to be fit for royalty. The word "YUPIN" was the Putonghua phonetic equivalent to the Chinese characters "御品". The mark was presented in a star device which reinforced that the goods the applicant claimed were of excellence. The mark together with the star device accordingly failed to qualify for registration in Part A.

In determining whether the mark was registrable in Part B, the Registrar must consider whether the mark was capable of distinguishing the applicant's goods from those of other traders. The Registrar emphasised that the onus of establishing that the mark was registrable lied with the applicant. The test was whether other traders were likely, in the ordinary course of their businesses and without any improper motive, to decide to use the same mark, or mark closely resembling it.

The Registrar asserted that it was likely that the ordinary members of the public, on seeing the mark, would perceive that the applicant's alcoholic beverages were of such a superior quality as to be fit for royalty. Therefore, other traders would wish to use the same mark or a mark nearly resembling the applicant's to describe the quality of their alcoholic beverages. On the other hand, it was unlikely that ordinary members of the public, on seeing the mark, would refer canned food to something which was superior and was consumed exclusively by superior.

The Registrar was not prepared to accept the mark with separate disclaimers of each of the Chinese characters.

In determining whether alcoholic beverages and canned food were of the same description, the Registrar considered the following factors¹:

1. the nature and composition of the goods;

2. the respective uses of the articles; and

3. the trade channels through which the commodities respectively were bought and sold.

The Registrar was not satisfied that the goods that the applicant claimed in class 29 were of the same description as the goods that the applicant claimed in class 33 because the compositions of the goods were different.

The Registrar concluded that the composite mark was not registrable in Part A or Part B. [We observe that the distinction between Part A and Part B was abolished by the new Trade Marks Ordinance which became effective on 4 April 2003 editor]

Decision of the Registrar of Trade Marks dated 29 May 2003 (unreported)

1. Jellinek's Application (1946) 63 RPC 59