Distinctiveness of a trademark

The distinctiveness of a trademark relates to how it denotes the source of goods or services and distinguishes such goods or services from those of others.Therefore, determination of distinctiveness must be made based on the relationship between the trademark and the designated goods or services, rather than on the trademark alone.

The distinctiveness of a trademark includes inherent distinctiveness and acquired distinctiveness. The former is inherent in the trademark itself and is not acquired through use, while the latter refers to the situation in which a sign is not distinctive by itself, but the use of the trademark on the market makes relevant consumers recognize it as a sign identifying the source of the goods or services; in other words, it acquires distinctiveness.In addition to the original meaning, such trademark also creates a new meaning that can identify the source. Therefore, acquired distinctiveness is also called secondary meaning.

Trademarks having inherent distinctiveness may be divided into coined trademarks, arbitrary trademarks and suggestive trademarks according to the degree of distinctiveness.

Coined signs

A "coined sign" is an original creation through the use of intellect rather than an application of any existing words, phrases, or things.A coined sign has no specific, existing meaning, and is created to distinguish the source of relevant goods or services.Because of the originality, a coined sign does not convey to consumers any information about the goods or services, but only serves to identify and distinguish the source.Therefore, a coined trademark has the strongest distinctiveness. From the perspective of competition, the grant of exclusive right to this type of sign will not affect fair competition because it is not a sign that competitors must or may use to denote the goods or services or make relevant explanations. Therefore, such sign is registrable.

Approved cases：

"GOOGLE" for search engine services.
"震旦"("Aurora”) for transmission services by telecommunications weighted networks.
"普騰"(“Proton”) for television sets and stereo sets.
for cars and passenger cars.

Arbitrary signs

An "arbitrary sign" consists of any existing words, phrases, or things which are completely irrelevant to the designated goods or services or their quality, function or other features.Because this type of sign does not convey the information about the designated goods or services, it is not meant to describe the goods or services.Rather, consumers will simply consider it a sign identifying and distinguishing the source.From the perspective of competition, the grant of exclusive right to this type of sign will not affect fair competition because competitors in the same trade do not need to use such words, phrases or things since they are completely irrelevant to the designated goods or services.Therefore, such sign is registrable.

Approved cases：

“蘋果APPLE”,”黑莓BlackBerry” for computers and data processors.
“風信子”(“Hyacinth”) for cups, bowls and dishes.
“向日葵”(“Sunflowers”)for solar collectors.
“春天”(“Spring”)for restaurant and hotel services.
for tiles, floor tiles and wall tiles.
for clothing.

Suggestive signs

A "suggestive trademark" refers, by use of metaphor or simile, to the quality, function, or anything related to the ingredients or nature, of the goods. Such sign is easy to remember, but is not necessarily or commonly used by competitors to describe goods or services.A suggestive description differs from direct description of goods or services. When the former is used, consumers must exercise certain level of imagination, thought, feeling or inference in order to understand the connection between the sign and the goods or services.This type of sign is not necessarily or naturally chosen by competitors to describe the features of the goods or services because there are other more directly descriptive words or devices available.Therefore, the grant of exclusive right to this type of sign will not affect fair competition and such sign is registrable.

Approved cases：

“快譯通”(“Quick Translation Understandable”) for electronic dictionaries.
“一匙靈”(“One Spoon Effective”) for laundry detergents in powder form.
“克潮靈”(Resisting Humidity Effective”) for dehumidifying agents.
“靠得住”(“Reliable”) for sanitary napkins.
“足爽”(“Foot Refreshing”) for medicated ointment for H.K. Feet.
for chairs, rocking chairs, desks and chairs.

Factors for Determining Distinctiveness

Whether a trademark is distinctive should be determined on the basis of the facts and evidence of each case, the relation between the trademark and the designated goods or services, use by competitors in the same trade, the applicant's method of use and the actual trading situations.