Belgium: ECJ: Three Strikes and You´re In!

In a September 20, 2001 ground-breaking decision, an application by Procter & Gamble for the diaper trademark BABY-DRY succeeded at the European Court of Justice (ECJ) level after its application was rejected by the prior three levels: the Examination Division of the Office for Harmonization of the Internal Market (OHIM), the Board of Appeal of OHIM, and the Court of First Instance in Luxembourg.

In all three instances the mark was refused on the basis of its lack of distinctiveness (Article 7.1(b)(c) of the E.U. Regulation on Trade Marks).

Following the opinion of Advocate General Jacobs the reasoning of the court can probably be best summarized in paragraph 43 of the judgment: "Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics."

The Court also states under paragraph 40: "Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination, enabling it to be registered as a trademark."

The decision will have an important impact in Europe regarding the acceptance of trademarks, which may be somewhat descriptive, but are not solely descriptive as to the goods and services themselves or their essential characteristics.

Future trademark owners filing in the European Union, whether before the Office in Alicante or before a national Office of a Member State, will find that the standards of acceptance of descriptive trademarks will have broadened due to this decision.