Opposition of Registration of Descriptive Trade Marks

The Registrar of Trade Marks recently examined whether trade marks “a2 Store” and “ATWO” should be refused registration under, inter alia, section 11(1)(c) of the Trade Marks Ordinance (Cap 559) (“TMO”) on the ground that the term “A2” designates one of the two primary variants of beta-casein protein contained in cow’s milk (the other being “A1”), and thus serves in the trade to designate that milk and milk-based products are free of A1 beta-casein protein.

Significantly, the Registrar of Trade Marks:-
– held that the “relevant date” in the context of s11(1)(c) of the TMO would be the application date, rather than the priority date claimed. This is notwithstanding s41(2)(b) of the TMO, which stipulates that the registrability of a trade mark shall not be affected by any use of it in Hong Kong between the priority date and the application date;
– considered whether, in view of the goods and services concerned, the composition of the “relevant public” would, in addition to the average consumer, include professionals such as medical professionals, dietitians, pharmacists and academia; and
– held that the designation of the product characteristic need not be factually accurate so long as the mark in question may serve to designate a characteristic of the goods or services in question.

William Tse and Kristy K Y Wong, instructed by Clifford Chance, acted for Société des Produits Nestlé S.A (the opponent in both sets of opposition proceedings).

Click here for the judgments: Trade Mark “a2 Store” [2023] HKTMR 29 and Trade Mark “ATWO” [2023] HKTMR 30.