Originally published February 2004

The European Court of Justice ("ECJ") has recently looked at three cases concerning applications for registration of potentially descriptive and/or non-distinctive marks. The Doublemint approach was adopted and the ECJ confirmed that these marks were incapable of registration. This is the case even where two or more non-distinctive words are amalgamated to form a new word, or where there are synonyms available which can be used to indicate the same characteristics of a product. The decisions further reduce the scope for registration of such marks which at first appeared to be quite liberal in the BABY-DRY decision.

Background

Applications for registration as trade marks were made by three (unrelated) parties for the following words:

  • Biomild in respect of milk products
  • Postkantoor (which translates as "post office") in respect of paper, advertising, insurance, postage-stamps, construction, telecommunications, transport, education and technical information and advice.
  • NEW BORN BABY in respect of dolls and accessories for dolls.

In the Biomild and Postkantoor cases a reference was made to the ECJ for a preliminary ruling on interpretation of the Council Directive 89/104/EEC (Trade Marks Directive). The New Born Baby case is an appeal from a decision of the Court of First instance, and the Advocate General’s opinion has now been published.

Outcome

In Biomild and Postkantoor the ECJ said new words formed by joining non-distinctive words together were not automatically distinctive. There needed to be some additional unusual characteristic which would render the mark distinctive and more than the sum of its parts as in the BABY-DRY registration. The availability of synonyms or other words that could be used to describe the characteristics of goods/services did not make a mark available for registration. This is the case even where the mark is not the most common sign for designating the characteristics of goods/services.

In New Born Baby, the Advocate General said that an essential characteristic of a toy is that it represents something. The dolls in question represent newborn babies. Where a mark solely describes the thing to which it is applied it cannot be registered and must be available to be used by others. As the accessories are linked to the main product the mark is descriptive of both the product and the accessories for it.

Comment

The ECJ appears to be taking a consistent approach to these marks, endorsing the decision in Doublemint. All three cases illustrate the fact that the ECJ is keen to ensure that everyday descriptive words are available for everyone to use. This shows a further retreat from the Baby-Dry decision of 2001.

Perhaps in the future, more thought will have to be put into the design of new marks to ensure that there is a creative or unusual aspect to them, to ensure that they are allusive rather than purely descriptive.

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