Postkantoor Biomild New Born Baby

15 March 2004

Mark Campbell

Introduction

There have been two recent judgments from the European Court of Justice and an Advocate General’s opinion delivered in relation to the registration of composite word marks. This area of European trade mark law has been the subject of much debate and this article will consider the current position with regard to composite trade marks in the light of these cases.

Postkantoor

In Koninklijke KPN Nederland NV v Benelux-Merkenbureau (Case C-363/99), following a reference from the Regional Court of Appeal in the Hague, the ECJ considered a number of questions on the interpretation of Articles 2 and 3 of the Trade Marks Directive. One of the questions for the court was whether a composite word mark such as ‘Postkantoor’ (‘Postkantoor’ can be translated as ‘post office’), which is composed of individual parts which are descriptive of the goods or services, should be regarded as descriptive of those goods or services and therefore refused registration.

The court noted that it was in the public interest that a sign which is purely descriptive of the relevant goods and services should be freely available. The court also affirmed the rule for a composite word mark that generally, where each part is descriptive, the mere combination of these parts will also be descriptive. However the court did note that a combination of parts (which are in themselves descriptive) may not be descriptive for this purpose if the combination “creates an impression which is sufficiently far removed from that produced by the simple combination”. Where the mark is a word which is to be seen and heard this test will apply to both the written and aural impression.

For a composite word mark to be registered as a trade mark there must therefore be a “perceptible difference between the word and the sum of its parts”. A perceptible difference can arise because of the unusual combination of words or because the composite word has acquired a meaning of its own. Finally, the court also held that it is irrelevant whether or not there are synonyms capable of describing the relevant goods or services.

The court also held the following. (1) A trade mark registration authority must take into account all the relevant facts and circumstances when considering the registration of a mark, while a court reviewing a decision about registration must also consider all the relevant facts and circumstances. (2) It is irrelevant for the purposes of a trade mark application in a particular Member State that the mark has been registered in another Member State in respect of similar goods or services. (3) Where a Members State’s national law provides that the right conferred by a word mark automatically extends to its translation into other languages the trade mark authority must assess the descriptiveness of the word in each of the languages. (4) A mark which is descriptive of particular goods or services but not of other goods or services cannot be regarded as necessarily being distinctive in respect of the other goods or services. (5) The Directive prevents a trade mark authority from registering a mark subject to a disclaimer that the relevant goods or services do not have a particular characteristic. This would lead to legal uncertainty. (6) A trade mark registration authority must refuse to register a mark which falls within the grounds of refusal set out in the Directive.

Biomild

In Campina Melkunie BV v Benelux-Merkenbureau (Case 265/00), following a reference from the Benelux Court of Justice, the ECJ considered the registration of the mark ‘Biomild’ which Campina had applied to register in three classes in respect of its mild-flavoured yoghurt product. The Benelux Trade Mark Office had refused the registration of ‘Biomild’ because the mark was descriptive. It was stated that the mark simply conveyed that the product was biological and mild. The main issue before the court in Biomild was similar to composite word point in Postkantoor (discussed above) and, considering that the two judgments were given on the same day, it is not surprising that the ECJ’s reasoning in Biomild is almost identical to Postkantoor in this regard.

New Born Baby

Advocate General Jacobs has given an opinion in Office for Harmonisation in the Internal Market (Trade Marks and Designs) v Zapf Creation AG (Case C-498/01 P). Zapf’s application to register ‘New Born Baby’ as a Community trade mark in respect of dolls and accessories was refused by OHIM because it was descriptive of the goods in question and was not distinctive. Zapf successfully challenged this decision in the Court of First Instance.

The Advocate General’s opinion is in relation to OHIM’s appeal of the CFI’s decision and considers OHIM’s three grounds of appeal. (1) The AG observed that it is an essential characteristic of many toys that they represent something else. For example, a toy motorcycle or toy giraffe is intended to represent a motorcycle or giraffe. However, where an applicant seeks to register a mark for an item such as a toy which is representative of another item and the mark is descriptive of that other item then registration should be refused. (2) The AG noted that the intended use of an accessory for any product is by definition intimately linked to the product itself. A term which is used in the trade to describe the principal product may also be used in trade to indicate the purpose of the accessory. While the descriptiveness of a mark must be assessed with regard to each class in the application, this should not be applied too strictly where the goods in question are accessories for goods in another class. (3) The AG noted that there is considerable overlap between the assessment of distinctiveness and descriptiveness. A mark which is descriptive cannot be distinctive and, further, there is a correlation between the degree of descriptiveness of a mark and its lack of distinctiveness. The fact that a mark is not found to be descriptive does not however determine the question of distinctiveness. Further, although a mark cannot be regarded as lacking distinctiveness because it is unimaginative “the presence or absence of any fanciful element” is indeed relevant in assessing distinctiveness. The AG noted that the Board of Appeal of OHIM had “demonstrated the absence of a fanciful element by the stressing the ordinariness of the term ‘New Born Baby’ in English.”


The likely impact of the Postkantoor and Biomild decisions and the AG’s opinion in New Born Baby


What is likely to be the impact of the Postkantoor, Biomild and New Born Baby cases? In the first instance the Postkantoor and Biomild decisions have added weight to the assertion that descriptive marks should be freely available to all and that their use should not be restricted by allowing their registration as trade marks. The ECJ has also emphasised that the grounds of refusal should be considered in light of the public interest which underpins them.

In both Postkantoor and Biomild the court has held that, with regard to composite word marks, there must be a “perceptible difference” between a composite word and the sum of its parts and that the composite word must create an impression which is “sufficiently far removed” from that produced by the simple combination of its parts. An applicant for a trade mark which comprises a composite word will thus have to demonstrate that the composite word has some unusual variation because of its syntax or the meaning given by the combination. In Postkantoor, the ECJ went further by holding that a composite word may not be descriptive if it has become part of the everyday language and acquired a distinctive meaning which is independent of its parts. However, even when a composite word has acquired such a distinctive meaning it will still be subject to the test of descriptiveness. The ECJ has also been clear that it is irrelevant whether or not there are synonyms capable of describing the goods or services in question. This appears to emphasise a more robust approach to the registration of composite word marks by the ECJ than has perhaps been seen in recent times.


The ECJ’s decisions in Postkantoor and Biomild, along with its decision in the Doublemint case (OHIM v Wrigley Case C-191/01 P), mark a retreat from its approach to composite word marks in the Baby Dry case (Proctor & Gamble Company v OHIM Case C-383/99 P). In Doublemint, it had been held that a mark must be refused registration if even one of its possible meanings is descriptive of the relevant goods or services. In Baby Dry, a decision which has been the subject of much criticism, the ECJ appeared to take a relatively liberal approach to the question of descriptiveness. In this context it is worth noting that in Baby Dry, the ECJ had previously stated that “any perceptible difference” (as opposed to “a perceptible difference” in Postkantoor and Biomild) between a composite word and the terms used commonly in the trade would allow the word to be registered as a trade mark.


The AG’s opinion in New Born Baby further reinforces the view that descriptive marks should be freely available. The AG was keen to restrict the registration of a descriptive mark where the mark relates to goods such as toys which are representative of something else. Further the AG has also been clear about the extent to which a mark should be registered in respect of accessories for goods where the mark is descriptive of the principal goods. The AG has also been fairly robust in noting that the use of an accessory is intimately linked to the use of the principal product. The ECJ’s decision in the light of the AG’s opinion will therefore be awaited with interest. The AG was also clear that any conflict between the decisions in Baby Dry and Windsurfing Chiemsee (Joined Cases C-108/97 and C-109/97) as to the availability of descriptive marks had been resolved in Doublemint.

In conclusion, the Postkantoor and Biomild decisions, along with the earlier Doublemint decision, appear to demonstrate a retreat by the ECJ from its position in Baby Dry and thus set a lower threshold for refusal of a composite word mark. This is likely to restrict registration of similar marks in the future. It does however remain to be seen precisely how this guidance will be applied in practice by trade mark registration authorities and the national courts and it is for this reason that the decisions of the referring courts in Postkantoor and Biomild will be eagerly awaited. Although the ECJ has clearly shifted its position since the Baby Dry case, the guidance which it has now given still appears vague and rather subjective. It remains to be seen the extent to which phrases such as “perceptible difference” and “sufficiently far removed” can and will be interpreted consistently? The major question therefore for applicants and practitioners which must still be answered is how this guidance from the ECJ can be applied at both the application stage and the relevant appeal stages in a way which is clear and consistent?

Also published in the April 2004 issue of WIPR.


Important - The information in this article is provided subject to the disclaimer. The law may have changed since first publication and the reader is cautioned accordingly.