Applications for dishwashing tablets refused by Court of First Instance
Since shape marks became registrable, it was only a matter of time before the boundaries of what was acceptable for registration were tested. The ECJ's ruling in Philips -v- Remington is still awaited and in the meantime, helpful guidance has been provided by the Court of First Instance (CFI) in a series of 11 appeals on 19 September 2001. The appeals were from the decisions of the Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM), which had been referred to the CFI to clarify the extent to which shape marks with borderline levels of distinctiveness should be registered. Four of these appeals were brought by Henkel KgaA (T-355/99, T-336/99, T-337/99, T-30/00), the remainder by Procter & Gamble Company (T-117/00, T-118/00, T-119/00, T-120/00, T-121/00, T-128/00, T-129/00). All of the marks applied for, bar the mark considered in T-30/00 which was a figurative representation of a three dimensional tablet, were for three dimensional tablets in either rectangular, circular or square form. Each tablet was argued as distinctive on the basis that it was either represented in two colourways and/or included geometric depressions in the top of the tablet. All of the applications included specifications in class 3 for, inter alia, washing preparations.
The CFI considered that the public's perception of a figurative or three dimensional mark which does not faithfully represent a product as compared to one which does is not necessarily the same. Whereas the former might be regarded as distinctive and an indication of trade origin, the latter might not. However, it was wrong to apply a different interpretation to a figurative representation of an actual three dimensional product as compared to a three dimensional mark of the same product for the purposes of considering distinctiveness.
One factor in considering these cases was the level of attention given by the average consumer to the shape and pattern of washing machine and dishwasher tablets. Such tablets were everyday objects and therefore the attention level of the average consumer was not high. The degree of distinctiveness necessary in such marks was therefore likely to be higher than in non-everyday goods. The shapes that had been chosen were ordinary geometrical shapes and were not distinctive of themselves, the use of two colours was not distinctive and it was impossible to divorce the representations of the marks applied for from the goods themselves. To be registrable, therefore, it was necessary to ascertain:
1. Whether the design of the product represented could, of itself, make an impact on the public mind; and
2. Whether the way in which the product was represented had some distinctive feature capable of denoting the product's origin.
Here, where the use of colour indicated to the consumer different qualities represented in different coloured parts of the tablets, and the advertising by the applicants and other manufacturers served to reinforce that view, the use of different colours did not serve to make the tablets distinctive as to trade origin. Even if consumers nevertheless got into the habit of recognising a product from its colours, that was not necessarily enough to preclude a ground of refusal based on Article 7(1)(b) of Regulation 40/94/EC (which provides an absolute ground for refusal of a mark on the basis that it lacks distinctiveness). It would not necessarily thereby overcome the requirement for a minimum degree of distinctiveness. Such a factor would be taken into account only under Article 7(3), which was not of relevance in these cases (Article 7(3) provides that a mark may become registrable if it has become distinctive through the use made of it).
In two applications, certain parts of the applications were allowed, but only for goods for which the marks were not considered representative, namely (in class 3) for perfumery, essential oils, cosmetics, hair lotions and dentifrices.
Baby-Dry accepted by ECJ
In the first appeal from the CFI to the European Court of Justice (ECJ) under the CTM Regulation, Procter & Gamble Company -v- OHIM (Case C-383/99P of 20 September 2001), the ECJ considered Article 7(1)(c) in relation to a word mark BABY-DRY. The mark had been refused by the Court of First Instance and by the OHIM Board of Appeal on the grounds that it consisted exclusively of descriptive signs or indications. The OHIM argued before the CFI that a refusal to register such a mark on grounds of descriptiveness depended upon the fulfilment of three conditions:
1. There is nothing about the way in which the sign is presented nor does it possess any additional features such as to cause it to be anything other than solely descriptive.
2. The sign alludes to an essential quality of the goods, and not a secondary quality or one that is not specific to the goods;
3. That allusion is clear to potential consumers of the goods.
The CFI had held that the mark BABY-DRY met these conditions and was therefore solely descriptive.
However, the ECJ held that descriptiveness was not merely determined by the words taken separately, but in relation to the whole which they formed. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics was apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.
Ineligibility for registration in one part of the Community rendered a mark ineligible for registration as a Community trade mark. Therefore, in this case, the court needed to assess the word mark BABY-DRY by putting itself in the shoes of an English-speaking consumer. Although, from such a consumer's perspective, the word combination unquestionably alluded to the function which the goods were supposed to fulfil, it still did not satisfy the disqualifying criteria set out by the OHIM and upheld by the CFI. The syntactically unusual juxtaposition of the two words was not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics. The word combination was a lexical invention bestowing distinctive power on the mark and therefore could not be refused registration under Article 7(1)(c). The Community trade mark application for BABY-DRY was therefore allowed.
The CFI emphasised in the washing tablets decisions that the criteria for assessing the distinctive character of 3-D trade marks do not differ from those applicable to other types of trade marks. In applying the criteria to marks which consisted of the shape and colour of the product itself, however, the Court held that account had to be taken of the public perception of such marks. It considered that, whilst the public is used to recognising words as marks which indicate origin, this is not necessarily so where the sign is indistinguishable from the shape of the product itself. Although there is at present a clear reluctance to register such shape and colour marks, if the public is educated to view that the shape and colour of particular goods are indicative of their origin, decisions on such marks may in future start to shift towards allowing registration.
Both cases indicate that a lower level of distinctiveness will be acceptable than previously had been applied. Both the ECJ and the CFI accepted that Article 7(1)(b) and 8 respectively set minimum standards to be overcome and, if they were, the application should be accepted. This is very different from the applicant needing to show that their application positively enables the goods or services of the applicant to be distinguished as to their origin. This was particularly marked in the ECJ's decision in BABY-DRY where the Court held that Article 7(1)(c) was intended only to prevent registration of those signs which served in normal usage (from a consumer's point of view) to designate, either directly or by reference to, one of the essential characteristics of the goods or services for which registration was sought: A mark should not be refused registration unless it comprised no other signs or indications and, in addition, the purely descriptive signs or indications of which it was composed were not presented or configured in a manner that distinguished the resultant whole from the usual way of designating the goods or services or their essential characteristics.