When is a trade mark considered distinctive?

This article was last updated in 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 BABYDRY 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.

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