Updated: Apr 5
The Applicant, Schweiger, Martin Rainer Gabriel, filed an application to register a word mark “STRONG BY CHOICE” in Class 25 of the Nice Classification in respect of “Shorts; T-shirts” (the “Application”).
The Examiner has raised an objection to the registration of the Mark as the Examiner was of the view that the Mark is devoid of any distinctive character for the following reasons:
(a) the Mark was merely a “promotional slogan which conveys a laudatory connotation” as it is a “commercial tagline or an advertising phrase which simply serves to suggest that the Applicant is committed to providing shorts and T-shirts which are able to withstand wear, i.e., durable and lasting.”
(b) The mere fact that “no one else uses the mark or the mark is not one that other traders would typically wish to use, does not make the mark automatically distinctive.”
(c) The Mark will not be registered if at least one of its possible meanings is capable of designating a characteristic of the relevant goods or services in question.
The Examiner invited the applicant to ensure the registrability of the trademark by providing evidence that the trademark has acquired distinctiveness through use in connection with the goods for which registration is sought. But no such evidence was provided. Instead, the applicant requested a hearing to provide an opinion on the inherent distinctiveness of the Mark, and the Hearing was held before the IP Adjudicator.
The Applicant’s submissions before the IP Adjudicator can be summarised as follows:
(a) The Mark is a word mark made up of three-word elements. These words must be read together and not disjunctively.
(b) The Examiner illegitimately focussed on only one word element – the word “STRONG” – in arriving at her conclusion.
(c) The word “STRONG” is not an obvious and natural way of describing shorts and/or T-shirts that can withstand wear. One would not ordinarily refer to “strong shorts” and “strong T-shirts”.
(d) Even by their own, “BY” and “CHOICE” make no reference to the quality or characteristics of shorts and/or T-shirts.
(e) The message that the Examiner contends to be conveyed by the Mark, that the Applicant is committed to providing shorts and T-shirts that can withstand wear, is not clear, straightforward and unambiguous. There is a need for the average consumer to apply thought and exercise mental effort to figure out what the Mark might be referring to.
Based on the above submissions made by the Applicant, the IP Adjudicator mainly discussed in relation to if the Mark is inherently distinctive.
Whether a particular mark is inherently distinctive (or inherently descriptive) should be determined by the context-specific exercise, which must be applied by reference to
(1) the goods or services for which registration is sought; and
(2) the perception of the average consumer of those goods or services, who is deemed to be reasonably well informed, observant, and circumspect.
In addition to the above, the distinctive character of a mark is to be assessed as a whole.
A. Mark must be considered as whole
It is unusual to hear someone describe a T-shirt or shorts as “strong.” The complete phrase “STRONG BY CHOICE” must be taken into consideration when interpreting the term “strong.”
When taken as a whole, the typical consumer would not immediately understand that the phrase itself refers to the quality of T-shirts or shorts. The phrase is ambiguous in that various people may take it to signify different things.
In fact, the phrase “strong by choice” used by the applicant in its correspondence with the Examiner returns hits related to lifestyle, character, personality, or physical strength on the first page of a Google search. None of them directly or indirectly relate to how long clothing will last.
In these premises, even assuming that the word “strong” is by itself descriptive of the durability of T-shirts and shorts, the phrase “STRONG BY CHOICE,” when taken as a whole, constitutes a fairly “unusual combination of words” in relation to T-shirts and shorts, creating an impression that is sufficiently dissimilar from the impression created by the word “strong” simpliciter. Such compound word marks are not devoid of distinctive character.
B. A Mark shall not be registered if at least one of the possible meanings of the Mark is capable of designating a characteristic of the relevant goods or services.
Further, it is pertinent to note that the above principle is arguably correct but must be understood in the context of two other equally important legal principles.
First, that characteristic must be “easily recognisable” by the average consumer of that industry.
Second, the focus is not on every conceivable consumer; the assessment is done by reference to a “significant proportion” of consumers in that industry.
The IP Adjudicator took the view that some consumers not well versed in the English language might associate the phrase “strong by choice” with the durability of the clothing apparel, such consumers are, in his view, likely few, and they are likely to do a double take and rethink whether the phrase does indeed refer to the durability of the clothing apparel or something else. It invokes some degree of imagination and thought on the consumer’s part. The average consumer is likely to explore different possibilities as to what the phrase means and does not immediately conclude that it is related to the durability of t-shirts and shorts.
C. Degree of Originality
It is important to note that the test for assessing distinctiveness is the same for all categories of marks, and the registrability of slogans was discussed in the case of Lidl Stiftung & Co. KG v European Union Intellectual Property Office (“Lidl Stiftung”). In that case, the EU court explained that the contested Mark requires the relevant public to exercise some cognitive effort and place the Mark in a certain context, and there was also a certain originality to the Mark that will enable the consumers to identify the commercial origin of the goods.
The IP Adjudicator for the mark “party like gatsy” emphasised that it was not sufficient for the Mark to simply set off a “cognitive process”; it had to possess “a certain originality or resonance.” On the present facts, the IP Adjudicator mentioned that the phrase “Strong by Choice” exudes a certain degree of originality in relation to T-shirts and shorts, which enables consumers to identify the commercial origin of the goods.
Having considered the above requirements and legal principles, the IP adjudicator waived the Examiner’s objection and accepted the Application for publication.
Balaji Loganathan, BA., BL., (HON'S), PGDIPL. IP Manager, Biro Oktroi Roosseno (Singapore), Pte Ltd