“Independent distinctive role” in trade marks

The Registrar of Trade Marks recently examined whether composite trade marks “ ” (“Subject Marks”) should be refused registration under section 12(3) of the Trade Marks Ordinance (Cap 559) on the ground that they are confusingly similar to the earlier mark “ATWO” (“Earlier Mark”).

Particularly, the Registrar dealt with the concept of “independent distinctive role” in a situation where the earlier mark is written across a device, namely the double droplets which is descriptive in respect of the goods in question.

The concept of “independent distinctive role” provides that if the average consumer would perceive the common element “Atwo” to have distinctive significance independently of the Subject Marks, then they may be confused as a result of the similarity of the Subject Marks to the Earlier Mark.

In the present case, the Registrar held that the average consumer would unlikely perceive “Atwo” as having an independent distinctive role since the same appears to assimilate into the double droplets device and the average consumer would likely consider them as a whole rather than as separate components.

Even if “Atwo” would be perceived as having an independent distinctive role, it does not necessarily follow that there would be a likelihood of confusion since the other component i.e. “illuma” remains a distinctive and dominant component in the Subject Marks.  Thus, the overall impression created by the Subject Marks are very different to that of the Earlier Mark.

William Tse, instructed by Clifford Chance, acted for Société des Produits Nestlé S.A (the Applicant in the opposition proceedings). Read the full decision here: Trade Mark “Atwo illuma” [2024] HKTMR 8.