Originally published March 2005

There have been a whole raft of decisions issued by the European Court of First Instance (CFI) and the European Court of Justice (ECJ) over the last two years concerning the question of how one evaluates whether a trade mark is descriptive. Marks such as BIOMILD, POSTKANTOOR, DOUBLEMINT and BABY-DRY should now trip off the tongue of any trade mark lawyer. One must now add a new mark to that illustrious list, EUROPREMIUM.

On the 12th January 2005, the CFI provided further guidance on the how descriptive a trade mark must be to be denied registration. Article 7(1)(c) of the Community Trade Mark Regulation provides that:

‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of rendering of the service, or other characteristics of the goods or service’

are to be denied registration.

The aforesaid provision is intended to prevent the monopolisation of terms, which consist of exclusively descriptive matter. However, there has always been a difficulty in defining the limits of when a mark is descriptive and when a mark is not descriptive.

A bit of history

Although BABY-DRY, which dealt with the registration of a mark for nappies, initially was felt to herald a liberal interpretation of the descriptiveness criteria by the European Courts, DOUBLEMINT (which covered chewing gum) firmly established that if there was any possibility of a mark being used in a descriptive sense or consisting exclusively of elements, which were purely descriptive, then registration should be denied. The fact that a competitor could use other terms to describe his goods and services was not a sufficient argument to achieve registration. The POSTKANTOOR and BIOMILD cases, concerning the registration of marks for post office services and milk products respectively, further established that a mark consisting of a word or neologism composed of elements, each of which is descriptive of the characteristics of the products or services in respect of which registration is sought, is itself descriptive, unless there is a perceptible difference between the word or neologism and the mere sum of its parts. However, what about the situation when the mark simply alludes to the characteristics of the goods and services under consideration?

Alluding to the characteristics of the goods or Services

To an extent this question was considered in the Dart Industries v OHIM (ULTRA-PLUS) in 2002 when the ECJ held that when a trader extols, indirectly and in an abstract manner, to the excellence of its products by way of the use of the sign, but the sign does not directly and immediately inform the consumer of one of the specific characteristics of the goods in question, then registration can be achieved. The ULTAPLUS decision is very similar to the English nineteenth century case concerning the registration of the mark SOLIO. Merely alluding to the characteristics of the goods in question in a trade mark does not preclude the registration of that mark, providing the allusion is indirect. EUROPREMIUM builds on the principles of the ULTAPLUS case and goes further.

The decision at hand

On the 24th March 2000, Deutsche Post Euro Express GmbH applied to register the mark EUROPREMIUM covering amongst other goods and services, packaging materials in Class 16, goods of wood and cork in class 20, advertising and various business services in class 35 and postal services in class 39. The Examiner refused the application on the basis EUROPREMIUM lacked distinctive character and was descriptive, a decision upheld by the Fourth Board of Appeal on the 20th June 2003.

The Board of Appeal held that the prefix 'euro' would be understood as a reference to the adjective 'European' and 'premium' means in English 'of high quality' and that the composite word thus created gives the impression in the consumers mind that he is dealing with quality goods and services coming from Europe.

However, the CFI did not view EUROPREMIUM in the same way as the Board of Appeal. The Court essentially found that one must first decide what are the essential characteristics of the goods and services in question. Although the word 'euro' may well allude to a geographical characteristic, it held that the Board of Appeal had not provided any justification as to why geographical origin was an essential characteristic of postal services, packaging or goods made of cork. Further, the Court held the word 'premium' in the meaning adopted by the Board of Appeal is merely a laudatory term evoking a characteristic that the applicant seeks to attribute to its own goods, yet does not inform consumers of a specific and objective characteristic of the goods and services offered. The word 'premium' can not therefore serve to designate the type of goods and services in question, either directly or by reference to their essential characteristics. Since the mark EUROPREMIUM was therefore not composed of elements descriptive of the goods and services in question, the Board of Appeal could not reject the application under Article 7(1)(c) of the Regulation.

Lessons to be learnt

It would appear that two conclusions can be drawn from the EUROPREMIUM decision: -

  1. Mere 'advertising puff' or laudatory terms such as 'premium' will not in general be deemed descriptive of goods and services,
  2. One must assess what the ‘essential characteristics’ of the goods or services in question are and then determine whether a term describes one of those characteristics when considering the question of distinctiveness. The aforesaid test would appear more liberal than a mere objective assessment of whether a term is descriptive or not, the ‘essential’ rather than the simple characteristics of the goods and services in question must be considered.

The EUROPREMIUM decision is a good decision for Community Trade Mark applicants and does herald a slightly more liberal attitude to the registration of trade marks by the European Courts. Whether this liberal attitude will hold true is open to question however.

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.