Descriptive Trade Marks Can Be Registered - Landmark ECJ Decision

Profession:Taylor Wessing

The ECJ (in handing down its first decision in respect of an appeal from the Community Trade Mark Office based in Alicante, Spain) has decided that the mark "BABY-DRY" is capable of being registrable as a Community Trade Mark ("CTM") in respect of "disposable diapers".

The decision contains extremely useful dicta as to what sorts of descriptive word-only marks are capable of being registered as a CTM. As readers may already be aware, historically it has always been difficult to obtain registrations for descriptive word-only marks, either as a CTM or a UK trade mark. The decision can therefore be viewed as something of a landmark.

As a result of the decision, a flood of CTM applications seeking to register "descriptive-style" word-only trade marks can be expected in the near future.

The Case

The "BABY-DRY" case involved an application filed by Proctor & Gamble seeking registration of the mark "BABY-DRY" as a CTM in respect of disposable diapers made out of paper or cellulose and diapers made out of textile.

Initially, the OHIM examiner and the First Board of Appeal of the OHIM refused the application on the basis that "BABY-DRY" consisted exclusively of words which might serve in trade to designate the intended purpose of the goods (namely, to keep a baby dry) and also because the mark was devoid of distinctive character (and hence not registrable pursuant to Articles 7(1)(b) and (c) of Regulation No 40/94 governing the CTM system).

Procter & Gamble appealed to the Court of First Instance, which upheld the decision of the First Board of Appeal, on the basis that the purpose of nappies is to be absorbent (ie in order to keep babies dry) and hence the mark "BABY-DRY" simply "conveyed to consumers the intended purpose of the goods" and "exhibited no additional feature to render the sign distinctive".

Procter & Gamble then appealed to the European Court of Justice ("ECJ") asking it to annul the judgment of the Court of First Instance.

The ECJ held that Community law prohibited the registration of purely descriptive signs or indications as trade marks. The purpose of this prohibition was to "prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function".

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