A limitation for brand owners seeking trade mark registration is that, as a general rule, descriptive words do not qualify to be trade marks, to allow everyone to use the words freely.
The issue came to prominence in what is known as the 'Baby-Dry' case. In that case the European Court of Justice ruled that Proctor & Gamble could use the descriptive terms 'baby' and 'dry' together as a trade mark because they formed an unusual combination.
But last year an application by gum maker Wrigley to register the term 'Doublemint' as a trade mark was rejected, on the grounds that one of its possible meanings could designate a characteristic of the goods concerned.
This decision was further clarified last week when the Court ruled on the cases of Koninklijke KPN Nederland NV, which concerned the 'Postkantoor' – or 'post office' trade mark, and Campina Melkunie BV, relating to the 'Biomild' trade mark.
The Postkantoor decision
Koninklijke KPN Nederland NV (KPN) is a telecommunications company, and used to be a state owned corporation, one of whose responsibilities included running the Post Office. It was still involved in this when in April 1997 it lodged an application for registration of a Postkantoor (post office) as a trade mark.
This was refused, on the grounds that the mark was descriptive and accordingly had no distinctive character that would allow it to be registered as a trade mark.
In March 1998 KPN appealed but before ruling the Gerechtshof te 's-Gravenhage (the Dutch regional court of appeal) referred some questions to the European Court of Justice. One of these asked whether a trade mark that was descriptive of some goods or services but not of others, did have sufficiently distinctive character in relation to those other goods and services to be registered as a trade mark.
According to the Court, "where registration of a mark is sought in respect of various goods or services, the competent authority must check, in relation to each of the goods or services claimed, that none of the grounds for refusal" applies. The authority may reach different conclusions in respect of each good or service.
Said the Court, "a mark which is descriptive of the characteristics of certain goods or services but not of those of other goods or services" does not necessarily have "distinctive character in relation to those other goods or services".
The Dutch court also asked whether a trade mark made up of elements, each of which is individually descriptive, is itself descriptive.
The European Court of Justice ruled that it is not sufficient for the individual elements to be descriptive – "The word itself must be found to be so."
The Court held that the elements forming the trade mark do not actually have to be in use descriptively at the time of application. It is sufficient, said the Court, "that those signs and indications could be used for such purposes. A word must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned."
In general, a combination of descriptive parts remains descriptive. In the opinion of the Court:
"Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned."
But the Court was willing to create an exception, where the combination "creates an impression which is sufficiently far removed from that produced by the simple combination of those elements."
This, said the Court, would have the result that:
"the word is more than the sum of its parts, or that the word has become part of everyday language and has acquired its own meaning, with the result that it is now independent of its components. In the latter case, it is necessary to ascertain whether a word which has acquired its own meaning is not itself descriptive for the purposes of the same provision."
The Biomild case
Campina Melkunie BV, a milk product producer, applied to register the word 'Biomild' as a trade mark in March 1996. The mark is used to market a yoghurt.
The application was refused later that year, on the grounds that it was a combination of two descriptive words – 'biological' and 'mild' – and did not have the distinctive character required for registration of a trade mark.
Campina appealed to the Gerechtshof te 's-Gravenhage and the action was dismissed. In 1997 Campina made a further appeal to the Supreme Court of the Netherlands, which referred some questions to the Benelux Court of Justice. The Benelux Court stayed the proceedings while further questions of EU law were considered by the ECJ.
In summary these questions asked if and when a trade mark composed of words that are individually descriptive of a good or service, is in itself not descriptive of that good or service.
The Court, as with the KPN case, found that the mark would be held to be descriptive unless:
"there is a perceptible difference between the neologism and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts."