Sunday, March 04, 2012

Do Trademarks Killl? Or Are They Victim? A Hong Kong Story With A Happy Ending

Florence Ka-Yee Lam, lawyer at Wilkinson & Grist which was already founded in 1860, wrote an interesting legal brief for IAM magazine on a current decision by the trademark registry of Hong Kong that upheld the registration of Philip Morris' trademark Marlboro Lights, see here.

When one reads the original decision of the Trademark Registry of Hong Kong one can ask why this relatively simple case had to take around 5 years before a decision was taken. The application for revocation was filed September 22, 2006 and an amended version was filed December 11, 2006.

Annelise Connell asked the Trademark Registry of Hong Kong to revoke trademark Marlboro Light, based on Caption 559 Section 52 Trade Marks Ordinance:

“(2) The registration of a trade mark may be revoked on any of the following
grounds, namely –
(c) that in consequence of the use made of it by the owner or with his
consent, in relation to the goods or services for which it is registered, the 
trade mark is liable to mislead the public, particularly as to the nature, 
quality or geographical origin of those goods or services: or …

Ms Connell's arguments are that the word “lights” in combination with cigarettes gives the false impression that Marlboro Lights are less harmful than Marlboro Red or other Marlboro cigarettes that do not contain the descriptor “lights”. Research has shown that light cigarettes are no less harmful, but that the perception amongst smokers is that Marlboro Lights cigarettes are less harmful. This perception might be based on  news about machine tests that measured that tar output of lights cigarettes was lower. However, humans are no robots, and managed to inhale more tar than could be measured with robots.

Ms Ling Ho, of Clifford Chance argued successfully for Philip Morris, that no distinction, in terms of health warnings to be applied to all cigarettes packs of all types of cigarette sold in Hong Kong since 1982, had ever been drawn between tobacco products producing lower tar yields and others.
According to the registrant, the applicant did not show sufficiently a serious risk for an average consumer, who is deemed to be reasonably well informed, reasonably observant and circumspect. In other words the registrant asserts: people know that smoking is bad for your health, all smoking. This is an important point, because deception has two parties, the deceiver and the one that is or is not susceptible for the deception.
Section 52 (2)(c) starts with "that in consequence of the use made of it by the owner or with his consent". According to the registrant, the public health authorities were responsible for the erroneous belief that low tar cigarettes are less harmful to health. 

Ms Lam writes: "Thus, even assuming that the use of the subject mark was liable to mislead the public, the applicant had also failed to establish that the alleged deceptiveness of the mark was the consequence of the use made by it by the registered owner." 

Trademarks are just as kitchen knifes, which can be used by third parties in a culinary or in a homicidal way. 

Time for slogans
This Marlboro Lights case reminds me of the former city marketing slogan (trademarked) of the Hong Kong Tourism Board: Hong Kong, The City of Life! Isn't this deceptive? If, out of every 100,000 deaths in Hong Kong, 43 can be blamed on air pollution? I suggest the following slogan: Hong Kong people should get rid of pollution before pollution gets rid of Hong Kong people. Read more hereHong Kong City of Fatal Attractions might be better? My beloved Hong Kong has now chosen, together with many other Asian cities I am sure, for the more generic Asia's World City. I know HK can do better than this.

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