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
Related Topics
 
Related Articles
 
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions