Replies to post #137240 on Enzyme Environmental Solutions Inc (EESO)

[solar fusion]

Why don't just leave Jared alone. He has much more important things to do right now.

[wEaReLeGiOn]

Good point, thanks for the post.


McDonald's lawyers are perhaps the most ruthless name protectors on planet earth over the use of their corporate name.

It's no wonder EESO was waffling so long over making this release. If EESO did not get approval, even if it was just one small owner/operator, the litigation doors may open.

EESO could have used the O/A's LLC number, or other such business identification, without using McDonald's name.


Someone might want to tell Jarred to reissue a "correction" PR and contact McDonalds ASAP

[SolMan1]

McDonalds, McDonalds, McDonalds, McDonalds, McDonalds
So Sue Me!

[lazyfaire]

You are being presumptuous and misleading in claiming that EESO did not have approval from McDonald's.... you do NOT know this. I say they likely went through the process. Oh, I'm sorry, I meant McDonald's(R). :rolls eyes:

[SolMan1]

http://www.in.gov/apps/sos/trademarks/getResults.jml Check the link

[drifterfcrc]

Well I know that the company got permission from Corporate to issue this PR. As for the "tm" being included don't know. I will send it to Mark. Thanks.

[mysterymeat]

The trademark application for: "I’M LOVIN’ IT" was rejected in December 2004
http://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC300029169R.pdf
TRADE MARKS ORDINANCE (Cap. 559)
APPLICATION No.: 300029169
MARK: I’M LOVIN’ IT
APPLICANT: McDonald’s Corporation
CLASS: 29, 30, 32, 43
STATEMENT OF REASONS FOR DECISION
Background
1. Application to register the mark “I’M LOVIN’ IT” in Classes 29, 30, 32 and 43
under the Trade Marks Ordinance (Cap. 559) (“Ordinance”) was received by the
Registry on 6 June 2003. The applicant of the mark was Global Restaurant
Operations of Ireland Limited.
2. Application to register a registrable transaction (on Trade Mark Form T10) was
subsequently received by the Registry in respect of the assignment of the subject
application from Global Restaurant Operations of Ireland Limited to McDonald’s
Corporation. Particulars of the assignment were recorded on the Register on 20
November 2003.
3. The trade mark application was examined in accordance with the provisions of
the Ordinance. Objection was raised under section 11(1)(b) of the Ordinance.
4. The applicant requested a hearing which took place on 23 August 2004. The
applicant was represented by Mr. Kim Nicholson of Marks and Clerk. I reserved
my decision at the end of the hearing.
The Ordinance
5. 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) signs which do not satisfy the requirements of section 3(1)
(meaning of “trade mark”);
(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) trade marks which consist exclusively of signs which have
become customary in the current language or in the honest and
established practices of the trade.”
2
6. The applicant did not file evidence of use of the mark. I therefore have only the
prima facie case to consider.
The applicant’s submissions
7. Mr. Nicholson’s submissions covered two areas - (a) the registrability of the
mark based on a prima facie case; and (b) the relevance of overseas registrations
to the present application.
8. Concerning the registrability of the mark, Mr. Nicholson’s main submissions
were as follows:
(a) Although the mark may be laudatory, it is not a phrase that people would
normally employ in relation to these goods and services as it is couched in
the present continuous tense.
(b) The degree of sentiment conveyed by the expression is excessive. It is the
superabundance of laudatory sentiment that makes the mark distinctive.
(c) There is no evidence to show that the mark is commonly used by other
traders. A search of the mark on the internet shows that most of the hits refer
to the applicant.
(d) The phrase is an expression more likely to be uttered by consumers to
describe their feelings towards a particular product. It is not likely that other
traders would wish to use this mark in relation to their products.
(e) Slogans that are more descriptive and generic than the subject mark have
been registered by the Registrar based on a prima facie case. Examples of
slogans previously accepted for registration were quoted for comparison.
9. On the relevance of foreign registrations, Mr. Nicholson made the following
submissions:
(a) It has been the practice of the Hong Kong Registrar to quote decisions of
the UK courts and UK Trade Marks Registry that supported his views.
However, the Registrar never took account of equally relevant registrations
or decisions that did not suit his purpose.
(b) The subject mark was accepted for registration in Australia and New
Zealand in the same classes based on a prima facie case. The relevant
legislative provisions governing registrability of trade marks in Australia
(sections 17 and 41 of Trade Marks Act 1995) and New Zealand (sections 5
and 18 of Trade Marks Act 2002) are effectively identical to sections 3 and
11 of our Ordinance.
(c) The Australian and New Zealand registrations are highly relevant to the
present case and the Registrar should take account of these registrations
when considering the registrability of the mark.
3
10. Copies of the certificates showing registration of the subject mark in the abovementioned
jurisdictions and extracts of the relevant legislative provisions were
provided to me for reference.
11. In further support of his submission that the Registrar should take into account
overseas acceptances of the mark, Mr. Nicholson quoted the following
authorities:
(a) Re Bausch & Lomb Incorporated1 ; and
(b) The following comment from Kerly’s Law of Trade Marks and Trade
Names2:
“The 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.”
Decision
Registrability of the mark based on a prima facie case
12. The mark “I’M LOVIN’ IT” is the abbreviated equivalent of the expression “I’M
LOVING IT”. It is a slogan consisting of ordinary English words. The statement
expresses a person’s passion or strong liking, desire or feeling for something.
13. It should be made clear at the outset that a slogan is not objectionable in itself as
a trade mark. Furthermore, the criteria for the registrability of a slogan is no
stricter than for other types of marks. Each slogan will be assessed on its own
merits in relation to the goods or services in question.
14. The mark has to be examined, first of all, against the absolute grounds for refusal
in section 11(1) of the Ordinance. The objection raised by the Registrar is that
mark is “devoid of any distinctive character” under section 11(1)(b).
15. The phrase “devoid of distinctive character” has been subject to interpretation in
a number of cases. In British Sugar Plc v. James Robertson & Sons Ltd3 Jacob. J.
succinctly explained as follows:
“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?”
16. The meaning of “distinctiveness” was elaborated by the Court of Appeal in the
1 HCMP 000203/1979
2 Page 144 of Kerly’s Law of Trade Marks and Trade Names 13th Edition
3 [1996] RPC 281
4
Nestle SA’s Trade Mark Application (Have a Break)4, a case also concerning the
registrability of a slogan. The test of “distinctiveness” was explained by the Vice
Chancellor in the following manner:
“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. For my part I would
particularly emphasise that the relevant distinctiveness is that which
identifies a product as originating from a particular undertaking.”
17. Further, the Court of Appeal in Nestle SA’s Trade Mark Application agreed with
the conclusion of the hearing officer at the UK Trade Marks Registry and the
matters considered by him in arriving at such conclusion. Of particular relevance
to the present application is the observation made by the hearing officer that the
reaction of the average consumer to a mark has to be assessed on the basis of
normal and fair use of the mark in advertising the goods as well as on packaging.
18. In addition to the above cases, the meaning of “distinctiveness” was also
discussed by Mr. Geoffrey Hobbs Q.C., acting as the Appointed Person in
“Cycling IS…” Trade Mark Applications5 as follows:
“It thus appears to be legitimate, when assessing whether a sign is
sufficiently distinctive to qualify for registration, to consider whether it can
indeed be presumed that independent use of the same sign by different
suppliers of goods or services of the kind specified in the application for
registration would be likely to cause the relevant class of persons or at least
a significant proportion thereof, to believe that the goods or services on
offer to them came from the same undertaking or economically-linked
undertakings.”
19. Applying the above principles to the present application, I should consider the
subject mark from the perspective of an average consumer of the applied-for
goods and services who is reasonably well-informed and observant. Such a
consumer would be exposed to a wide range of packaging and advertising
techniques used by today’s traders in promoting their products and services. He
would be aware that catchy expressions and slogans are commonly employed by
traders for advertising purpose. On the above basis, I need to ask myself either of
the following questions:
(a) Would the average consumer perceive the subject mark as identifying the
relevant goods and services as originating from a particular undertaking?
(b) Assuming that the subject mark were independently used by different
suppliers of goods or services of the kind specified in the subject application
4 [2004] FSR 2
5 [2002] RPC 37
5
for registration, would the average consumer believe that the goods or
services on offer to him came from the same undertaking?
20. In the context of food products and drinks in classes 29, 30 and 31 and restaurant
services in class 43, the mark is a direct statement that describes, from a
consumer’s point of view, his strong liking for the relevant goods and services. It
conveys an immediate and direct message that the products and services appeal
to consumers. It is a laudatory statement that expresses a consumer’s positive
feelings towards certain products or services.
21. With respect to the first question referred to in paragraph 19 above, I do not think
that an average consumer with the qualities mentioned in that paragraph would,
on seeing the mark, regard it as identifying that the relevant goods or services
originate from a particular undertaking. Rather, upon seeing the mark being used
on packaging or in advertising the goods and services concerned, it is likely that
he would consider it as a mere promotional statement used for advertising
purposes. Applying the principles in British Sugar Plc v. James Robertson &
Sons Ltd6, consumers would have to be educated, through use of the mark, before
they would regard it as a trade mark which serves to guarantee the origin of the
goods and services.
22. With regard to the second question, since the subject statement will merely be
perceived by the average consumer as an advertising slogan and not having the
function of identifying the origin of the goods or services concerned, it follows
that independent use of the statement by different suppliers in relation to their
goods or services is unlikely to cause such consumer to believe that the goods or
services come from the same undertaking.
23. Mr. Nicholson submitted that it is the superabundance of laudatory sentiment that
makes the mark distinctive. He also submitted that the mark is an expression that
is uttered by a consumer and therefore, it is unlikely that other traders would
wish to use it in the course of their business.
24. I do not agree with Mr. Nicholson’s submissions. Highly laudatory and
exaggerated statements are often used in advertising. Moreover, it is a common
technique for advertisers to present their products and services as seen from the
perspective of users as it would have a more direct impact on the target
consumers.
25. Mr. Nicholson mentioned that consumers would normally use the expression “I
LOVE IT” to describe their liking for certain things. It is unlikely that they will
express the statement in the present continuous tense.
26. Even assuming that it is more usual for consumers to express their feelings by “I
LOVE IT” rather than “I’M LOVIN’ IT”, I do not consider that the grammatical
difference is sufficient to confer distinctive character on the subject mark. From
the point of linguistic communication, both expressions convey the same basic
information namely, consumers are fond of the goods or services in question.
6 Paragraph 15 above
6
Expressing the statement in the present continuous tense would not alter the
average consumer’s perception that the subject mark is a mere promotional
statement and does not serve as a guarantee of the origin of the goods and
services in question.
27. Mr Nicholson further submitted that the mark was not commonly used by other
traders. Internet search for the mark shows that most of the hits refer to the
applicant. No doubt, internet search could assist in ascertaining whether a
mark/an expression is now commonly used in the trade. However, the fact that a
particular mark is not currently used by other traders could not demonstrate that
the mark possess distinctive character. The crux of the matter is whether the
mark would be seen by the average consumer as a badge of origin. For the
reasons discussed above, I do not consider that the subject mark could serve this
purpose unless consumers are first educated of its function through the use of the
mark.
28. For the reasons stated above, I find that the subject mark is devoid of distinctive
character and is precluded from registration under section 11(1)(b) of the
Ordinance.
Relevance of previous acceptances by the Registrar
29. Mr. Nicholson referred me to a number of slogans that were accepted for
registration by the Registrar based on a prima facie case. In his view, those
slogans are more descriptive or generic than the subject mark. I have reviewed
the registrations quoted by Mr. Nicholson. I consider that most of the quoted
examples are not on par with the present application. Furthermore, I do not
think it appropriate to make direct comparisons between different marks on the
register. Each case has to be considered on its merits. This issue has been
discussed in British Sugar Plc v. James Robertson & Sons Ltd where Jacob. J.
said:
“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, e.g. MADAME Trade Mark ([1966] RPC 541) and
the same must be true under the 1994 Act.”
Relevance of foreign registrations
30. Mr. Nicholson explained that as the mark was accepted for registration in
Australia and New Zealand based on a prima facie case, there was no written
decision explaining the reasons for the acceptances. He drew my attention to the
Trade Mark History in IP Australia’s website that showed the prosecution history
of each trade mark application.
31. My attention was also drawn to the comments made by Zimmern, J. in Bausch
and Lomb Incorporated (Soflens) to the effect that the Hong Kong Trade Marks
Registry should not turn a blind eye to the trade mark laws of other
Commonwealth countries. I was therefore asked to take into account registrations
of the subject mark in Australia and New Zealand.
7
32. 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 has 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.
33. The relevance of foreign registrations to trade mark examination was also
discussed by the Appointed Person, Mr. Geoffrey Hobbs Q.C., in Automotive
Network Exchange Trade Mark7, where he said:
“National trade mark rights are territorially limited and granted
independently of each other in accordance with the principles stated in
Article 6 of the Paris Convention. When a sign is presented for
registration under the 1994 Act, the question for consideration is whether it
is capable of functioning satisfactorily as a trade mark in relation to goods
or services supplied or to be supplied in or from within the United
Kingdom: …… The bare fact of registration in other countries is not
sufficient to establish that a sign is eligible for registration here.”
34. I agree with Mr. Nicholson that the subject mark appeared to sail through to
acceptance in Australia without objection. Like Mr. Nicholson, I also have no
doubt that the Australian Trade Marks Registry maintains a rigorous examination
process. However, the fact remains that the information available merely shows
that the subject mark was accepted based on a prima facie case. I am unable to
ascertain the reasons and rationale behind the acceptances.
35. Mr. Nicholson 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 7-18, 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
7 [1998] RPC 885
8
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.’”
36. To conclude on this issue, I have taken account of the acceptances of the subject
mark in Australia and New Zealand in assessing the present application.
However, the bare fact of registrations, without more, is of limited assistance to
this case. The Registrar is under an obligation to make his own assessment on the
registrability of a mark submitted for registration. Where there are strong reasons
for refusal of a mark under the provisions of the Ordinance, it would not be right
for me to simply follow the decisions of other registries especially where reasons
for such acceptances are not available.
Conclusion
37. I have considered all documents filed by the applicant, the submissions made by
Mr. Nicholson during the hearing and the documents provided on behalf of the
Applicant in relation to this application. For the reasons stated above, I find that
the mark is devoid of any distinctive character within the meaning of section
11(1)(b) of the Ordinance and I therefore refuse this application under section
42(4)(b) of the Ordinance.
Maria K. Ng
for Registrar of Trade Marks
21 December 2004