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TRADE MARKS ORDINANCE (Cap. 559)

APPLICATION NO. : 301355256

MARK :

APPLICANT : BLACK CARD, LLC

CLASSES : 35, 36, 39 and 45

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STATEMENT OF REASONS FOR DECISION Background 1. On 3 June 2009, Black Card, LLC (“the applicant”) filed an application (“the

application”) for the registration of the mark shown below (“the subject mark”) under the Trade Marks Ordinance (Cap.559) (“the Ordinance”).

2. Registration of the subject mark is sought in respect of the following services:

Class 35 Promoting the sale of goods and services of others by awarding incentives to consumers for credit card use; providing business information about and making referrals in the field of consumer products and services for retail services concerning products, services, events, activities, attractions and facilities in particular geographic locations; merchandising services (sales promotion) for inducing the purchasing public to buy the goods of others through a promotional gift redemption program Class 36 Financial services, namely, charge, credit card and debit card services; bill payment processing services; computerized credit authorization and financial risk management services; providing information in the fields of foreign

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currency; financial services in relation to providing cash and other rebates for credit card use as part of a customer loyalty program Class 39 Providing travel information; providing flight arrival and departure information; arranging for travel visas, passports and travel documents for persons traveling abroad; making car rental and limousine reservations for others; arranging travel tours for others; airport services (transit services) featuring transit lounge facilities for passenger relaxation Class 45 Concierge services for others, namely, making requested personal, social and business arrangements and reservations and providing customer-specific information to meet the individual needs of customer card holders and travelers; personal concierge services for others comprised of making requested personal, social and business arrangements and reservations, personal shopping services; personal gift selection and gift reminder services for others; and providing customer-specific information to meet individual needs, all rendered in business establishments, office buildings, airports, hotels, residential complexes and homes; fraud detection services in the field of credit card usage; personal services in relation to providing information to travelers regarding foreign protocol.

3. At the examination stage, objections were raised against the application under

sections 11(1)(b) and (c) of the Ordinance on the grounds that the subject mark consists exclusively of signs which may serve to designate the characteristics of the services applied for and that it is devoid of any distinctive character. Despite submissions made on behalf of the applicant, the objections were maintained by the Registrar.

4. On 27 June 2011, the applicant requested a hearing on the registrability of the

subject mark. The hearing had been postponed twice and took place before me on 22 August 2012, at which Mr. Eric A. Szweda of Messrs. Troutman Sanders appeared for the applicant. I reserved my decision at the conclusion of the hearing.

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5. At the hearing, Mr. Szweda sought to rely on the statutory declaration of Kelly Akin dated 15 August 2012 filed in respect of trade mark application no. 301355210 (“the Akin Declaration”) with a view to showing that the subject mark, together with other applied-for marks of the applicant, had in fact acquired a distinctive character as a result of the use made of them for the purpose of section 11(2) of the Ordinance. I refused such request as the statutory declaration was only filed in respect of trade mark no. 301355210 and not the subject mark. However, leave was granted to the applicant to file a statutory declaration in substantially the same form as the one filed with the Registrar within one month from the date of the hearing. Subsequently, on 18 September 2012, the applicant filed a statutory declaration of Kelly Akin dated 14 September 2012 with a view to showing that the subject mark, together with other applied-for marks of the applicant, had in fact acquired a distinctive character as a result of the use made of them for the purpose of section 11(2) of the Ordinance.

Preliminary Issue 6. Upon re-consideration, I consider that it is not open to the applicant to seek leave

to file further submissions after the day of the hearing. Pursuant to rule 14(3) of the Trade Marks Rules (“the Rules”), the prescribed period for the applicant to file submissions shall end on the last day of the hearing. In other words, I shall only consider the submissions filed by the applicant on or before the hearing date, i.e. 22 August 2012, but not the statutory declaration dated 14 September 2012 for the purpose of this application.

The Ordinance 7. The absolute grounds for refusal of an application for registration of a trade mark

are set out in section 11 of the Ordinance. The relevant provisions of section 11 read as follows:

“(1) Subject to subsection (2), the following shall not be registered –

(a) …;

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(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) …”

8. Notwithstanding the provisions in the preceding paragraph, section 11(2) of the

Ordinance provides that:

“(2) A trade mark shall not be refused registration by virtue of subsection (1)(b), (c) or (d)

if, before the date of application for registration, it has in fact acquired a distinctive

character as a result of the use made of it.”

Decision Inherent registrability Section 11(1)(c) of the Ordinance 9. Section 11(1)(c) of the Ordinance excludes from registration 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 in respect of which registration is sought.

10. Section 11(1)(c) of the Ordinance is broadly similar to Article 7(1)(c) of the

Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community Trade Mark (“Regulation No. 40/94”). In Wm. Wrigley Jr. Company v OHIM (Case-191/01P) [2004] R.P.C. 18 (the “DOUBLEMINT” case), the European Court of Justice (“ECJ”) discussed the approach to Article 7(1)(c) of Regulation No. 40/94 and stated the relevant principles as follows:

“29. Article 7(1)(c) of Regulation No 40/94 provides that trade marks which ‘consist

exclusively of signs or indications which may serve, in trade, to designate the kind,

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quality, quantity, intended purpose, value, geographic origin, time of production of

the goods or of rendering of the service, or other characteristics of the goods or

service’ are not to be registered.

30. Accordingly, signs and indications which may serve in trade to designate the

characteristics of the goods or service in respect of which registration is sought are,

by virtue of Regulation No 40/94, deemed incapable, by their very nature, of

fulfilling the indication-of-origin function of the trade mark, without prejudice to the

possibility of their acquiring distinctive character through use under Article 7(3) of

Regulation No 40/94.

31. By prohibiting the registration as Community trade marks of such signs and

indications, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the

public interest, namely that descriptive signs or indications relating to the

characteristics of goods or services in respect of which registration is sought may be

freely used by all. That provision accordingly prevents such signs and indications

from being reserved to one undertaking alone because they have been registered as

trade marks (see, inter alia, in relation to the identical provisions of Article 3(1)(c) of

First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of

Member States relating to trade marks (OJ 1989 L 40, p.1), Windsurfing Chiemsee,

paragraph 25, and Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR

I-3161, paragraph 73).

32. In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of

Regulation No 40/94, it is not necessary that the signs and indications composing the

mark that are referred to in that article actually be in use at the time of the application

for registration in a way that is descriptive of goods or services such as those in

relation to which the application is filed, or of characteristics of those goods or

services. It is sufficient, as the wording of that provision itself indicates, that such

signs and indications could be used for such purposes. A sign must therefore be

refused registration under that provision if at least one of its possible meanings

designates a characteristic of the goods or services concerned.”

11. Moreover, the ECJ stated in Koninklijke KPN Nederland NV v Benelux-Merkenbureau (Case C-363/99) [2004] E.T.M.R. 57 (the "POSTKANTOOR" case) that:

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“98. As a general rule, a mere combination of elements, each of which is descriptive of

characteristics of the goods or services in respect of which registration is sought,

itself remains descriptive of those characteristics for the purposes of Article 3(1)(c)

of the Directive. Merely bringing those elements together without introducing any

unusual variations, in particular as to syntax or meaning, cannot result in anything

other than a mark consisting exclusively of signs or indications which may serve, in

trade, to designate characteristics of the goods or services concerned.

99. However, such a combination may not be descriptive within the meaning of Article

3(1)(c) of the Directive, provided that it creates an impression which is sufficiently

far removed from that produced by the simple combination of those elements…

100. Thus, a mark consisting of a word composed of elements, each of which is

descriptive of characteristics of the goods or services in respect of which registration

is sought, is itself descriptive of those characteristics for the purposes of Article

3(1)(c) of the Directive, unless there is a perceptible difference between the word and

the mere sum of its parts: that assumes either that, because of the unusual nature of

the combination in relation to the goods or services, the word creates an impression

which is sufficiently far removed from that produced by the mere combination of

meanings lent by the elements of which it is composed, with the result that the word

is more than the sum of its parts, or that the word has become part of everyday

language and has acquired its own meaning, with the result that it is now independent

of its components…” 12. In light of the legal principles above, to be precluded from registration under

section 11(1)(c) of the Ordinance, a mark does not have to be the normal way of describing the services in question. It is sufficient that the mark could be used for such a purpose. A mark is therefore objectionable if at least one of its possible meanings designates a characteristic of the services in question.

13. The subject mark consists of four ordinary English words, namely, “BLACK

CARD EXCLUSIVE REWARDS”. The word “BLACK” in the subject mark is well known as a colour. Despite the applicant has put forward a variety of possible meanings that may be attributed to “BLACK CARD”, when the two words are put together, they can be taken to mean a card in black colour; the

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subject mark “BLACK CARD EXCLUSIVE REWARDS” can therefore be taken to mean the exclusive rewards offered by a card in black colour.

14. By virtue of the nature of the services applied for, the relevant consumers are

ordinary members of the general public in Hong Kong who are holders or potential holders of credit cards or customer cards. I cannot agree with the applicant that the relevant consumers are restricted to a subset only although some card companies may target at a specific group of customers. The relevant consumers are reasonably well-informed, observant and circumspect but they cannot be expected to exercise more than an average level of care and attention in their selection of such services. Upon seeing the subject mark “BLACK CARD EXCLUSIVE REWARDS” used on the applied-for services, the relevant consumers would have the instantaneous impression that the services provided relate to rewards offered to a particular individual or group by a customer card or credit card in black colour.

15. At the hearing, Mr. Szweda submits that the expression “BLACK CARD” is not

exclusively descriptive of the services in question as the applicant is not in the business of selling black coloured rectangular shaped cards but to provide an array of services to an elite few which cannot possibly be defined as black card’s services. Given the expression “BLACK CARD” can also be used in many different ways unrelated to credit card services, he considers that the nature of black card’s services is not immediately evident to consumers. Moreover, as the colour black cannot define any of the services applied for, he suggests that the subject mark, as one of the formatives of “BLACK CARD”, does not exclusively designate the characteristics of such services. He also submits that there is currently only one black card which is marketed as a “BLACK CARD” by the applicant, as examples show that other traders have clearly identified their brands with the use of their black cards.

16. I do not agree with Mr. Szweda’s submissions that the subject mark, as one of the

formatives of “BLACK CARD”, is not exclusively descriptive of the services applied for. In respect of an objection under section 11(1)(c) of the Ordinance, it is irrelevant whether the applicant is in reality selling rectangular black cards or that other traders do not name their cards “black cards”. As we are examining the subject mark on a prima facie basis, the actual business carried

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out by the applicant is only relevant when assessing whether the subject mark has acquired a distinctive character on use under section 11(2) of the Ordinance. As regards the argument that the colour black cannot define any of the services applied for, the application is in respect of the subject mark containing the word “BLACK” and not just the colour black. The expression “BLACK CARD” can be taken to mean a card in black colour. As the services applied for range from promotional and merchandising services in Class 35, financial services in relation to credit card services in Class 36, travel services in Class 39 to concierge services for cardholders in Class 45, the expression “EXCLUSIVE REWARDS” in the subject mark is totally descriptive of the services that relate to rewards given to a particular individual or group as offered by the black card. Hence, the direct and obvious meaning that the subject mark “BLACK CARD EXCLUSIVE REWARDS” would convey to the consumers is that those services which relate to rewards are exclusively provided in conjunction with a credit card or a customer card categorised by the colour black. As such, the overall impression that the relevant consumers would have is that the subject mark denotes the characteristics of the services applied for, namely that those business, merchandising, financial, travel and personal services are provided by way of a reward programme for the benefit of black card holders or privileged customers within the “black card” category and this programme gives them access to an extensive range of privileges and benefits as well as exclusive rewards in return for their use of the cards. This is supported by the Internet references cited by the Registrar during the examination stage (see Appendix).

17. Mr. Szweda’s submissions that despite the common use of the words “BLACK

CARD”, other traders have been careful in identifying their brands when they offer cards which are black in colour and that there is only one “BLACK CARD” being marketed as such by the applicant fail to convince me. He has spent some length at the hearing to explain the difference between a physical card issued by Virgin Atlantic in black colour and the applicant’s. His emphasis is that despite calling their cards black credit cards, Virgin Atlantic has only printed the words “Virgin Atlantic” but not “BLACK CARD” on their cards and that other images have been added onto the black cards. In his view, other traders have been careful not to market their cards as “BLACK CARD” so as to differentiate their cards from the applicant’s. However, similar to the reasoning in paragraph 16 above, as we are examining the word mark “BLACK CARD

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EXCLUSIVE REWARDS” on a prima facie basis, the designs of black cards issued by the applicant and other traders are not relevant. What is crucial is that various traders have referred to their cards as black cards. Rather than saying other traders have been careful in their marketing exercise, I consider that it is precisely due to the common use and descriptive nature of the expression “BLACK CARD” that other traders have chosen to identify to consumers the origin of their services in relation to their black cards by reference to other signs such as DBS Black Card, RBS Black Card, NatWest Black Card, Virgin Atlantic Black Card and so on. As each of the expressions “BLACK CARD” and “EXCLUSIVE REWARDS” is descriptive of the characteristics of the services applied for and there is no perceptible difference between these expressions considered separately and the mere sum of these parts, the subject mark fails to create an impression which is sufficiently far removed from that produced by the simple combination of those elements. As such, the subject mark as a whole is descriptive of the characteristics of the applied-for services.

18. Mr. Szweda further refers me to Associated Newspaper Ltd v Express Newspaper

[2003] EWHC 1322 (Ch) and submits that, in that case, despite the multiple and common use of the term “mail” in the names of newspapers in the UK, the court found that continued trade mark protection was appropriate for expression using the word “mail”. He argues that such rationale should be extended to the present case.

19. I have considered the case quoted by Mr. Szweda and I find little assistance from

it. In that case, the claimants, who own, inter alia, registered trade marks The Mail, Daily Mail and The Mail on Sunday instituted prospective passing off and trade mark infringement actions against the defendant who intended to call its to-be-launched newspaper The Evening Mail which was referred to as The Mail in certain promotional interview. The defendant, on the other hand, sought to invalidate the claimants’ mark The Mail. The court found in favour of the claimants and accepted that the claimants have acquired goodwill and reputation in the marks concerned. In that case, there was also evidence which pointed to the expression The Mail being widely regarded by the public to a particular newspaper from a particular source. An extract from the Oxford English Dictionary was produced to show that the word “mail” is, amongst others, the Daily Mail, referring to the claimants’ newspaper. Hence, giving judgment for

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the claimants, the court held that the words “mail” and “the mail” are not descriptive and continue to have a pronounced trade mark significance.

20. As regards the present case, the applied-for services are essentially customer card

and credit card services. Whilst relying on the Associated Newspaper case, the applicant is not arguing that it has established goodwill and reputation through substantial use of the subject mark in Hong Kong in respect of the services applied-for As we are examining the subject mark on a prima facie basis rather than in passing off or infringement proceedings, evidence as to whether the subject mark is being widely regarded by the public to refer to a particular card from a particular source would only become relevant when assessing distinctiveness on use under section 11(2) of the Ordinance. In the premises, I do not understand how the case could assist the applicant at all.

21. Based on the above findings, I consider the subject mark consists exclusively of

signs that may serve to designate the characteristics of the applied-for services. The subject mark is therefore precluded from registration under section 11(1)(c) of the Ordinance.

Section 11(1)(b) of the Ordinance 22. Section 11(1)(b) of the Ordinance precludes registration of trade marks which are

devoid of any distinctive character. The public interest underlying section 11(1)(b) of the Ordinance is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (Deutsche SiSi-Werke GmbH & Co. Betriebs KG v OHIM (Case C-173/04P) [2006] E.T.M.R. 41 at paragraphs 60-61).

23. In Host Hotels & Resorts, L.P. v Registrar of Trade Marks (HCMP 554/2009),

the Hon Sakhrani J cited with approval the following cases (paras 17-18):

“17. In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 Jacob J (as he then was) said at page 306:

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“What does devoid of 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?”

18. In Nestle SA’s Trade Mark Application (Have a Break) [2004] FSR 2 Sir

Andrew Morritt VC (as he then was) said at paragraph 23: “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……” ”

24. According to the above legal principles, I have to assess a mark’s distinctiveness by reference to the services applied for, and the perception of the relevant consumers, who are presumed to be reasonably well-informed, circumspect and observant. To determine whether the subject mark has any distinctive character for the purpose of section 11(1)(b) of the Ordinance, the relevant question is whether the mark, assuming no use, serves to identify the applicant’s services as originating from a particular undertaking, and thus distinguishing them from those of other undertakings. In other words, the question is whether the perception and recollection the subject mark would trigger in the mind of the average consumer of the applied-for services would be origin specific (i.e. carry connotations of trade origin) or origin neutral (“CYCLING IS…” Trade Mark Applications [2002] R.P.C. 37 at paragraphs 66-69).

25. Mr. Szweda submits that “BLACK CARD” is an invented expression which has

an inherent distinctiveness and a finding that the expression “BLACK CARD” is distinctive necessarily leads to the conclusion that formatives of this sign, such as the subject mark, are also distinctive. He adds that whether the expression “EXCLUSIVE REWARDS” is distinctive or not would not alter the overall character of the distinctive expression “BLACK CARD” as a whole. I do not agree that the expression “BLACK CARD” is distinctive. As explained in

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paragraph 13 above, the expression “BLACK CARD” can be taken to mean a card in black colour. Hence, the direct and immediate message that the subject mark would convey to the relevant consumers is that the services provided relate to rewards exclusively enjoyed by black card holders or privileged customers within the “black card” category. I agree with Mr. Szweda that irrespective of whether the expression “EXCLUSIVE REWARDS” is distinctive or not, it would not alter the overall character of the expression “BLACK CARD” which I find is devoid of any distinctive character. In other words, neither does the expression “BLACK CARD” nor the subject mark “BLACK CARD EXCLUSIVE REWARDS” inform consumers of the commercial origin of the services in question, and the message conveyed by the expression “BLACK CARD” or the subject mark “BLACK CARD EXCLUSIVE REWARDS” is origin neutral.

26. Mr. Szweda also suggests that different traders have been using different colours

for their cards and customers are accustomed to seeing different colours of cards by different traders. However, in respect of an objection under section 11(1)(b) of the Ordinance, the question is whether, without educating the public, the subject mark could serve to identify the applicant’s services as originating from a particular undertaking, and thus distinguishing them from those of other undertakings. Mr. Szweda has failed to put forward any evidence showing customers would identify trade origin by different colours.

27. In view of the message conveyed by the subject mark in the context of the

services applied for, the subject mark fails to perform the essential function of trade marks in guaranteeing the identity of the origin of those services by enabling the relevant consumers to distinguish those services from those of other traders. I conclude that the subject mark is devoid of any distinctive character and is thus precluded from registration under section 11(1)(b) of the Ordinance.

Acquired distinctiveness 28. Although I have found that the subject mark has no inherent distinctive character

and not registrable under sections 11(1)(b) and 11(1)(c) in respect of the services applied for, if the subject mark has in fact acquired a distinctive character as a

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result of the use made of it for the purpose of section 11(2), the application for registration should not be refused. As indicated in paragraph 6, the statutory declaration filed on 18 September 2012 would not be considered. Mr. Szweda had submitted at the hearing that the Akin Declaration dated 15 August 2012 should equally apply to this application and he had made submissions for this application by referring to the Akin Declaration. For the reasons set out below, I consider that the subject mark has not acquired a distinctive character even if I were to take into account the evidence of use filed by way of the Akin Declaration in this application.

29. To assess the acquired distinctiveness of a mark, the ECJ stated in Windsurfing

Chiemsee Produktions-und Vertriebs GmbH v. Boots-und Segelzubehör Walter Huber and Another (Joined Cases C-108 and 109/97), [2000] Ch. 523:

“51. In assessing the distinctive character of a mark in respect of which registration has

been applied for, the following may also be taken into account: the market share held

by the mark; how intensive, geographically widespread and long-standing use of the

mark has been; the amount invested by the undertaking in promoting the mark; the

proportion of the relevant class of persons who, because of the mark, identify goods

as originating from a particular undertaking; and statements from chambers of

commerce and industry or other trade and professional associations.

52. If, on the basis of those factors, the competent authority finds that the relevant class

of persons, or at least a significant proportion thereof, identify goods as originating

from a particular undertaking because of the trade mark, it must hold that the

requirement for registering the mark laid down in Article 3(3) of the Directive is

satisfied…

54. … a trade mark acquires distinctive character following the use which has been made

of it where the mark has come to identify the product in respect of which registration

is applied for as originating from a particular undertaking and thus to distinguish that

product from goods of other undertakings.”

30. Although the above case is concerned with the interpretation of Article 3(3) of

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the First Council Directive 89/104/EEC,1 the provisions of the article are broadly similar to section 11(2) of the Ordinance and I find that the relevant principle is applicable to the application. Further to the principle above, the competent authority must make an overall assessment of the evidence in determining the question. The crucial question to ask is whether the relevant consumers referred to in paragraph 14 above have been educated to recognise the subject mark as a badge of origin of the services applied for. If I consider that a significant proportion of the relevant class of consumers identifies those services as originating from a particular undertaking because of the use made of the subject mark before the application date, the objections raised against the subject mark under sections 11(1)(b) and 11(1)(c) of the Ordinance would be overcome.

31. The point of time in determining whether the subject mark has in fact acquired a

distinctive character is the filing date of the application, i.e. 3 June 2009. The overall picture presented by the Akin Declaration can be summarised as follows – the applicant is a U.S.-based company, in business under the name Black Card LLC since July 2007, and is responsible for the promotion and administration of the BLACK CARD credit card services and related services. The applicant’s company in Hong Kong operates under the name of Black Card (Hong Kong) Limited. The expression “BLACK CARD” has been used and advertised since 2007 and related services have been launched in the United States in December 2008. However, the evidence does not show that the subject mark has in fact acquired a distinctive character as a result of the use made of it under section 11(2) of the Ordinance.

32. Ms. Akin declares that the “BLACK CARD” credit card is accepted in over 170

countries, including in Hong Kong and that spending by their members using the “BLACK CARD” credit card in Hong Kong for the period December 2008 through the end of July 2012 totalled some 14 million Hong Kong dollars (paragraph 5, Akin Declaration). However, the evidence does not show that the subject mark “BLACK CARD EXCLUSIVE REWARDS” has been used in respect of any of the services applied for at all. Even if I were to take into account the spending figures for the “BLACK CARD” credit card, I do not find the figures which spread over a period of three and a half years to be impressive

1 That Directive has now been replaced by Directive EEC/95/2008, but the relevant provisions remain essentially the same.

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given their members should belong to the high spending group. Besides, only the figures provided for the first 6 months (from December 2008 to the date of filing of the application) are relevant. Coupled with the fact that the applicant has not provided any breakdown of the figures, I am not satisfied that the applicant has established use of the subject mark in Hong Kong prior to the date of filing of the application.

33. What I have observed from the Akin Declaration is that the subject mark has not

been used by the applicant in respect of the applied-for services. The earliest date of use of the expressions “BLACK CARD” or “VISA BLACK CARD” by the applicant seems to be in December 2008, which is only 6 months before the filing date. Besides, many of the advertising materials exhibited to the Akin Declaration are either undated or posterior to the date of filing of the application. In Exhibit A, materials extracted from the Elite Traveler 2012, the online Four Seasons Magazine, GQ.com.cn, MH trends.com.cn, the online Robb Report Lifestyle and vogue.com.cn all post-dated the application date. Extracts from magazines such as the “GOTHAM”, “HAMPTONS”, “LOS ANGELES CONFIDENTIAL”, “VEGAS” and “CAPITAL FILE” are all undated. Although the applicant claims that those magazines were in circulation in Hong Kong, the circulation estimates given by the applicant seem to be in relation to an issue of Business Week published on 24 August 2009, which is after the date of filing of the application. Even if I were to take that into account, a total circulation of 4720 issues was too insignificant to represent the general public in Hong Kong. Besides, the applicant has not clarified whether the circulation figures for “Los Angeles Confidential” and “Capitol File” include any circulation in Hong Kong. As most of the advertising materials are not related to Hong Kong and post-dated the application date, the sample invoices relating to such advertisements as provided are of little assistance.

34. Apart from the observation that the subject mark has simply not been used on

any of the services applied for, I note from the advertisements that pre-dated the filing date that the “BLACK CARD” as provided by the applicant was aimed at a specific group of customers in the United States only. Indeed, to quote from the advertisements:

“it is limited to only 1% of U.S. residents to ensure the highest caliber

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of personalized service is provided to every Cardmember.”

Such description appeared very frequently in various advertisements in Exhibit A. Given the lack of local contact details for Hong Kong consumers and the way the contact phone number was presented in the advertisements, I consider that the target customers of such services are those who reside in the United States only. Without evidence of use of the subject mark and given the lack of advertising figures the applicant has spent in promoting the applied-for services bearing the subject mark in Hong Kong and the total number of members of BLACK CARD credit card services who are actually from Hong Kong, I fail to see how the applicant’s advertising elsewhere on the expression “BLACK CARD” can help to educate the general public in Hong Kong of the trade mark significance of the subject mark in respect of the services applied for.

35. I have similar observations for the advertising materials in other exhibits. Exhibit B contains screen shots relating to the advertisement of the expressions “BLACK CARD” or “VISA BLACK CARD” but not the subject mark. Besides, some of the materials are undated, for instance, the CNN.com/US screenshots. Some of them are post-dated, for instance, the CNN.com screenshots, the tgdaily.com and walletpop.com articles, and some of them are not even in English but in a foreign language (for instance, the plantaoonline.com article). I note that for the advertisements that pre-dated the date of filing of the application, they bore the words “INTRODUCING THE EXCLUSIVE BLACK CARD”. Even if the appearance of a card bearing the word “VISA” in these advertisements may suggest reference to credit card and debit card services as applied for under Class 36, the advertisements have no linkage to the other services applied for. More importantly, I doubt whether those websites are aimed at or intended for consumers in Hong Kong, and there is no evidence before me that those websites have been accessed by anyone from Hong Kong.

36. Likewise, Exhibits C and D contain post-dated advertisements and acceptance

form of BLACK CARD credit cards, undated video screenshots, undated samples of BLACK CARD credit cards and undated promotional products featuring the expression “BLACK CARD” but not the subject mark. I also note that the applicant has exhibited an issue of Black Card Mag which was published

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in summer 2012 after the application date. Moreover, since the magazine is only available to its members rather than the general public in Hong Kong, it would have been of no assistance even if it were circulated before the filing of the application.

37. Exhibit F contains a ‘splash page’ that the applicant put up in 2007 at

www.blackcard.com as well as a ‘splash page’ subsequently used on the applicant’s websites affiliated with international country code domain names. However, as those are introduction pages only and no use of the subject mark on the services applied for has been shown, I do not think the evidence assists in showing that a significant proportion of the relevant consumers in Hong Kong would, because of the subject mark, identify the applied-for services as originating from the applicant.

38. On the whole, in view of the lack of evidence showing use of the subject mark in

respect of the applied-for services in Hong Kong and the absence of sales and advertising figures in relation to the use of the subject mark in Hong Kong prior to the date of filing of the application, I am not satisfied that the subject mark has come to be identified by the relevant consumers as an indication of trade origin distinguishing the applicant’s services from those of others for the purpose of section 11(2) of the Ordinance. It follows that the objections raised under sections 11(1)(b) and 11(1)(c) of the Ordinance against the application cannot be overcome pursuant to section 11(2).

Other registrations on the register 39. Mr. Szweda draws my attention to other registered marks in Hong Kong which

he submits are similar to the subject mark in nature but are allowed to be registered on a prima facie basis. I do not think that it is appropriate to make a direct comparison between different applications or registrations on the register. I have considered the marks referred to but I do not think that they are on par with the present application. In any event, it is well established by case law that each case has to be assessed on the basis of its own merits and comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration (British Sugar Plc (supra), at page 305).

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As there are valid grounds for refusal in the application, I am not persuaded that the registrations of other marks in Hong Kong are of any assistance to the applicant in overcoming the objections.

Other registrations on foreign registers 40. Mr. Szweda has also cited registrations of other marks on foreign registers which

consist of the word “BLACK”, and marks with other elements or in combination with other words. Similar to the reasoning in paragraph 39 above, I do not think that it is appropriate to make a direct comparison between different applications or registrations on different registers. As I am not aware of the reasons behind such registrations on foreign registers and there are valid grounds for refusal in the application, such registrations will not assist the applicant in overcoming the objections.

Overseas Registrations 41. Mr. Szweda submits that the subject mark has been accepted for registration in

Mainland China, the European Union, Japan, India and Mexico, as shown in the list of registrations in Exhibit E of the Akin Declaration. It should be noted that national trade mark rights are territorially limited and granted independently of each other. The bare fact of registration in other countries is not sufficient to establish that a sign is eligible for registration here (Automotive Network Exchange Trade Mark [1998] R.P.C. 885). As valid reasons for refusal have been found, I am not persuaded that the subject mark should be accepted merely by following the decisions of other registries, in particular, when I am not aware of the reasons behind the acceptances.

Materials submitted after the hearing date 42. I should make one further point in relation to the application for registration.

After the hearing was concluded on 22 August 2012, apart from the statutory declaration of Kelly Akin dated 14 September 2012, Messrs. Troutman Sanders

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filed additional submissions by way of a letter on 18 September 2012 enclosing copies of recent favourable decisions on the oppositions raised by a third party against the application of the subject mark for registration in the Mainland. As indicated in paragraph 6 above, I am bound by rule 14 of the Rules to only take into account submissions filed by the applicant on or before the hearing date. As the opposition decisions were filed after the hearing, I would not take them into account for the purpose of this application. Moreover, Mr. Szweda was given ample opportunity to make his submissions (written or oral) at the hearing and I do not see any reason why such opposition decisions dated 17 July 2012 could not have been made available at the hearing. Furthermore, as indicated above, national trade mark rights are territorially limited. As I am not aware of the reasons behind the acceptance for registration in the Mainland and there are valid grounds for refusal in the application, such decisions will not assist the applicant in overcoming the objections raised.

Conclusion 43. In this decision, I have carefully considered all the documents filed by the

applicant before the hearing together with all the oral and written submissions made at the hearing in respect of the application. For the reasons stated above, I find that the subject mark is precluded from registration by sections 11(1)(b) and 11(1)(c) of the Ordinance. The application is accordingly refused under section 42(4)(b) of the Ordinance.

Karine Lai for Registrar of Trade Marks 21 February 2013

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