EU - European Court of Justice Defines Trademark Distinctiveness

Newsletters and Bulletins / February 2002 / European Union

EU - European Court of Justice Allows Registration of the Trademark BABY-DRY and Defines Distinctiveness

In Procter & Gamble Co. v. Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has ruled that marks consisting of certain word combinations, not used in common parlance to designate the relevant goods or services or their essential characteristics, may be deemed "lexical inventions bestowing distinctive power on the mark[s] so formed and may not be refused registration" on the grounds that such marks are solely descriptive and non-distinctive.

In this case, Procter & Gamble filed an application with the OHIM for the registration of BABY-DRY as a Community trademark in respect of disposable diapers.

The Examiner's decision to refuse registration was sustained by the First Board of Appeal of the OHIM which held that BABY-DRY in relation to diapers, whose purpose was to keep babies dry, consisted exclusively of words "which may serve, in trade, to designate the intended purpose of the goods" and that "it was also devoid of distinctive character," and thereby unregistrable under Article 7(1)(b) and (c) of Regulation No. 40/94. The Court of First Instance affirmed this decision and agreed that BABY-DRY "merely conveyed to consumers the intended purpose of the goods but exhibited no additional feature to render the sign distinctive".

In reversing the Court of First Instance, the ECJ first noted that Article 7(1) and Article 12 of Regulation No. 40/94 should be read together and adopted a very narrow interpretation of descriptiveness in evaluating the registrability of marks. As the ECJ stated:

[A] mark composed of signs or indications satisfying that definition [of descriptiveness] should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics.

In particular, in judging the BABY-DRY mark, the ECJ noted that:

[D]escriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.

The ECJ held that, while each of the "two words in the combination may form part of expressions used in everyday speech to" describe the function of diapers, "their syntactically unusual juxtaposition is not a familiar expression in the English language" with respect to diapers or their essential characteristics, and that the BABY-DRY mark was therefore sufficiently distinctive to qualify for registration.

This decision has significantly broadened the range of registrable marks in the European Community.

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