UK: Descriptive Trade Marks Can Be Registered - Landmark ECJ Decision

Last Updated: 22 May 2002

The ECJ (in handing down its first decision in respect of an appeal from the Community Trade Mark Office based in Alicante, Spain) has decided that the mark "BABY-DRY" is capable of being registrable as a Community Trade Mark ("CTM") in respect of "disposable diapers".

The decision contains extremely useful dicta as to what sorts of descriptive word-only marks are capable of being registered as a CTM. As readers may already be aware, historically it has always been difficult to obtain registrations for descriptive word-only marks, either as a CTM or a UK trade mark. The decision can therefore be viewed as something of a landmark.

As a result of the decision, a flood of CTM applications seeking to register "descriptive-style" word-only trade marks can be expected in the near future.

The Case

The "BABY-DRY" case involved an application filed by Proctor & Gamble seeking registration of the mark "BABY-DRY" as a CTM in respect of disposable diapers made out of paper or cellulose and diapers made out of textile.

Initially, the OHIM examiner and the First Board of Appeal of the OHIM refused the application on the basis that "BABY-DRY" consisted exclusively of words which might serve in trade to designate the intended purpose of the goods (namely, to keep a baby dry) and also because the mark was devoid of distinctive character (and hence not registrable pursuant to Articles 7(1)(b) and (c) of Regulation No 40/94 governing the CTM system).

Procter & Gamble appealed to the Court of First Instance, which upheld the decision of the First Board of Appeal, on the basis that the purpose of nappies is to be absorbent (ie in order to keep babies dry) and hence the mark "BABY-DRY" simply "conveyed to consumers the intended purpose of the goods" and "exhibited no additional feature to render the sign distinctive".

Procter & Gamble then appealed to the European Court of Justice ("ECJ") asking it to annul the judgment of the Court of First Instance.

The ECJ held that Community law prohibited the registration of purely descriptive signs or indications as trade marks. The purpose of this prohibition was to "prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function".

In order to assess whether "BABY-DRY" was capable of being distinctive, the ECJ held it was necessary to "put oneself in the shoes of an English-speaking consumer" and ask whether the expression "BABY-DRY" was a normal way of referring to nappies, or of representing their essential characteristics, in common parlance.

The ECJ decided that, whilst the mark unquestionably alluded to the function which nappies are supposed to fulfil, it was not a purely descriptive mark. The "syntactically unusual juxtaposition" of the words "BABY" and "DRY" was "not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics". The word combination was a "lexical invention" bestowing "distinctive power on the mark so formed" and was therefore capable of being registered as a CTM.

The decision in the "BABY-DRY" case will no doubt impact on a number of "semi-descriptive" trade mark applications currently pending before the OHIM, the proprietors of which will no doubt argue are "lexical inventions" and not purely descriptive marks.

The "BABY-DRY" case has been subsequently followed by another similar case, this time heard by the Court of First Instance. The Court was asked to consider the registrability of the word mark "NEW BORN BABY" as a CTM in respect of "Dolls to play with and accessories for such dolls in the form of playthings".

The Court held that a sign which is descriptive of what a toy represents (i.e. the toy looks like a new-born baby) cannot, without evidence from the persons targeted (ie consumers), automatically be considered to be descriptive of the toy itself. There was no evidence presented to the Court to show that consumers, when making their purchasing decision, would, without further reflection, instantly take the sign "NEW BORN BABY" to designate a quality or other characteristic of the dolls and, as a consequence, the mark was registerable as a CTM.

In the case of the accessories for the dolls, the Court held that the words "NEW BORN BABY" did not designate either the quality, intended purpose, or any other characteristic of the goods and was therefore registrable.


As a result of these two decisions, the OHIM will now be under increasing pressure to allow the registration of word marks that allude to the characteristics of the goods or services for which registration is sought. Provided a mark differs in some way from everyday use of English then it will be a good candidate for registration as a trade mark

The UK Patent Office will also find itself subject to similar pressure in respect of UK-only registered trade mark applications. If (as may in practice prove to be the case) the OHIM bows to this pressure, but the UK Patent Office resists, then the number of trade mark applications lodged in the UK will most likely reduce over the next few years, with brand owners favouring the more liberal (and more user friendly) registration system operated by OHIM.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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