UK: When is a Trade Mark Considered Distinctive?

Last Updated: 6 May 2004
Article by Lindsey Wrenn and Lee Curtis

Originally published April 2004

Time and money can be lost by attempting to register marks which lack ‘distinctive character’ and one must be skilled in pushing the right buttons at the relevant Trade Mark Office to gain the prize that is a trade mark registration.

Within the European Union Trade Mark law is regulated by a Trade Marks Directive which has become law in each member state. Under Article 3 of the Directive, trade marks that lack distinctive character or serve in the trade to designate the characteristics of the goods or services for which registration is sought cannot be registered.

The approach of the European Courts on the distinctiveness of trade marks has fluctuated over time. However, three cases concerning the marks BABY-DRY, DOUBLEMINT and POSTKANTOOR, the latter being decided in February of this year, finally appear to have laid down guidelines for the registration of marks on the borderline of distinctiveness.

BABY-DRY

The now well-known BABY-DRY case from September 2001 heralded what many thought was a liberal attitude to the registration of marks. Registration for BABY-DRY was sought for nappies and was initially refused by the Community Trade Marks Office (OHIM) on the basis that the mark consisted exclusively of words that were descriptive of nappies. The Court of First Instance (CFI) upheld the decision since the 'purpose of nappies is to be absorbent, in order to keep babies dry'. The CFI concluded that the term BABY-DRY merely conveyed to consumers the intended purpose of the goods and there were no additional features to render the sign distinctive.

The European Court of Justice (ECJ) overturned the CFI and allowed the sign to be registered. One of the questions asked of the ECJ was how descriptiveness should be assessed in relation to composite marks made up of two separate words. The ECJ said the test was whether the word combination in question was the normal way of referring to the goods or services or of representing their essential characteristics in 'common parlance'. The ECJ found that because of the 'syntactically unusual juxtaposition' of the words ‘baby’ and ‘dry’, BABY-DRY was not a familiar expression in the English language for describing nappies or describing their essential characteristics. The combination of the words Baby and Dry were a 'lexical invention bestowing distinctive power on the mark so formed'.

DOUBLEMINT

However, following the BABY-DRY decision, the hopes of WM Wrigley Jr Company in registering the mark DOUBLEMINT for chewing gum were to be dashed.

The DOUBLEMINT application was refused by OHIM on the basis the trade mark consisted solely of the word 'Doublemint' which was a combination of two English words with no additional fanciful or imaginative element.

An appeal was made to the CFI on the grounds that 'Doublemint' was not exclusively descriptive and was 'ambiguous and suggestive'. The CFI considered that for an English speaker, the numerous meanings of 'Doublemint' (for example, it could mean double the amount of mint or two kinds of mint) were immediately apparent but for a non-English speaker, the terms would have a vague and invented meaning. Therefore, as the average consumer would not immediately detect the description in relation to a characteristic of the goods, registration could not be refused. The decision was appealed by the OHIM.

In October 2003 the ECJ found that DOUBLEMINT was purely descriptive and the fact that 'double' and 'mint' in combination gave rise to a variety of possible meanings does not automatically mean that the words are not descriptive. The Advocate General, in a precursor to the ECJ decision, suggested that a proposed trade mark should be assessed as follows:

  • What is the relationship between the mark and the product? - If the mark to be used is a general description in the particular trade then registration will be refused,
  • How immediately is the message conveyed? If the mark quickly conveys the characteristic of the goods/services then it will not be registrable,
  • What is the significance of the characteristics in relation to the product in the consumer's mind? If the characteristics are intrinsic to the product or the consumer's choice of product, then the grounds for refusing registration because of the descriptive element are high.

When applied to the mark DOUBLEMINT there is a tangible reference to mint flavour which is doubled in some way and therefore is 'readily perceived' as such and the flavour is a prominent feature of the product. Registration was denied.

The ECJ held that a sign must be refused registration if one of its possible meanings is capable of designating a characteristic of the goods concerned. It was held that DOUBLEMINT was less unusual than BABY-DRY and the only lexical invention was the removal of a space between the words double and mint.

POSTKANTOOR

Finally, we come to Koninklijke KPN Nederland NV's (KPN) application to register the mark POSTKANTOOR (meaning 'post office' in Dutch) for 'paper, advertising, stamps, telecommunications and education'. The Benelux Trade Mark Office refused the application as being exclusively descriptive of the relevant goods and services in relation to a post office. The refusal was referred to the ECJ and although the ECJ followed the tests laid down by BABY-DRY, it imposed a much tougher interpretation of the said tests and denied POSTKANTOOR registration.

The ECJ stated that if due to the unusual nature of the combination of words which form a trade mark, the overall impression of the mark is sufficiently far removed from the descriptive elements of the words concerned, and the combination creates a different impression from the individual words, the mark is registrable. If the new word has established its own meaning, independent of the individual components which make up the mark, then again it is registrable. POSTKANTOOR confirms the tests laid down in the DOUBLEMINT decision.

Interestingly, the ECJ also made it clear that the registration of a trade mark in one Member State has no bearing on the registration of that same mark in another member state. Questions of distinctiveness therefore must be considered on a country by country basis.

Where Are We Now?

The BABY-DRY case appeared to hold - in order for registration to be denied, a mark must be exclusively descriptive so that if the words which formed the trade mark were capable of having other possible meanings that were not descriptive, registration would not be precluded. However, the DOUBLEMINT case retreated from this decision in that if at least one of its possible meanings was descriptive, then the sign must be refused registration. A view that was expressly followed by the ECJ in the POSTKANTOOR case.

The DOUBLEMINT and POSTKANTOOR decisions, contrary to some commentators, do not mean that the BABY-DRY tests are dead. The ECJ is probably anxious to show consistency in its decision making and appears at pains to emphasise that DOUBLEMINT and POSTKANTOOR simply interpret the BABY-DRY tests. Thus the reasoning behind the BABY-DRY decision has not been found incorrect, simply that the tests laid down in that case will be much more stringently interpreted. Undoubtedly marks which many thought could be registered as a result of BABY-DRY will now be denied registration, but the immortal words of 'syntactically unusual juxtaposition' can still be used in arguments with the Trade Mark Offices of the European Union.

Summary

It would appear that we may have returned to the simple test laid down in UK Trade Mark case law - if the mark you are attempting to register needs to be used by another trader in any way to describe their goods and services or their characteristics, then registration will be denied.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.