Following the well publicised “Baby-Dry” case (See Volume 15, Number 15 WIPR November 2001 page 6) many practitioners had thought that the threshold for registrability for a Community Trade Mark (CTM) had been lowered. By way of a recap, in that case the European Court of Justice (ECJ) considered Procter & Gamble’s application for the trade mark "Baby-Dry" for disposable nappies, and gave its judgment on how to assess whether a CTM was "descriptive" (within the meaning of Article 7(1)(c) of the Community Trade Mark Regulation or "CTMR") of the goods or services that was intended to be registered for.
In its ruling in the Baby-Dry case the ECJ came to the view that in order to overcome the restriction on registering "descriptive" word marks, an applicant had to demonstrate that when viewed as a whole, there was a perceptible difference between the mark and the corresponding term used in everyday speech by the relevant class of consumers. So in the case of Baby-Dry for nappies, because of the unusual grammatical juxtaposition of "baby" and "dry" it was held that it was unlikely that customers would see "Baby-Dry" as descriptive of the goods that it was to be registered for, i.e. nappies. There was a great deal of academic debate about the effect of this ruling on the way that Article 7(1)(c) was to be interpreted. Many thought that the threshold of registrability had been reduced, and that the floodgates had been opened.
The ECJ has now been given the opportunity to look at this issue again. Wrigley, the maker of chewing gum, had applied for a CTM for the word "Doublemint". The trade mark examiner and the Board of Appeal of OHIM had both rejected the trade mark application on the grounds that it would fail the test given in Article 7(1)(c). In other words it was descriptive of the chewing gum, in particular its flavour and composition.
The Court of First Instance (COFI) of the European Union, the lower court for appeals from OHIM, disagreed. They took the view that as the mark, Doublemint, was not exclusively descriptive (they were able to think of at least two possible meanings; (1) twice the usual amount of mint or, (2) flavoured with two kinds of mint) then it did not fall within the objection in Article 7(1)(c). This fact would be readily observable to any person who spoke English as their native language, therefore the word Doublemint would be deprived of an exclusively descriptive meaning. OHIM appealed this decision to the ECJ and Advocate General Jacobs ("AG") delivered his opinion on 10 April 2003. However, he did not limit his judgment solely to the question of whether the COFI had been right, but also took the opportunity to explain the judgment in Baby-Dry and how it should be applied.
In considering the COFI judgment itself, the Advocate General felt it was wrong for two reasons. Firstly, he considered the COFI had misconstrued the wording in Article 7(1)(c) itself. Article 7(1)(c) states that:
Absolute Grounds for refusal.
1. The following shall not be registered-
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering of the service, or other characteristics of the goods or service;
The COFI had taken the view that the word Doublemint could not be characterised as exclusively descriptive. In his opinion the AG said that Article 7(1)(c) has to be read so that the word "consist" is qualified by the word "exclusively", so that in assessing a potential trade mark what was important was whether all the elements of the word had descriptive capacity not whether they could have a non-descriptive different meaning. This lead on to the AG's second related point.
The fact that as a matter of fact the words "Double" and "Mint" when used in combination may give rise to a number of possible meanings that may be ambiguous or even suggestive, did not mean that the particular combination may not serve to designate the characteristics of that product. In effect the COFI had not gone far enough in its analysis. In order to overcome the objection under article 7(1)(c), you had to show that the word did not describe the goods. The two possible meanings that the COFI had devised, were both still descriptive of the goods that registration was being sought for. On this ground alone, the AG said that it was possible to quash the COFI decision.
However, he also took the opportunity to make one or two other observations on the effect of the Baby-Dry decision and how it should be applied. In relation to how the courts should decide whether a mark is descriptive, the AG recognised that there was a line to be drawn between terms that may be used to describe a product and those that merely allude to the description. The latter are registerable as trade marks and in fact desirable. In trying to assess where on this sliding scale a particular trade mark fall, the AG suggested some framework guidelines. The first guideline was how the term to be registered relates to the product’s characteristics. The more factual and objective, the more likely that such a mark would be viewed as descriptive. Conversely the more imaginative, the less likely.
The second guideline related to the immediacy of the message conveyed. The more readily the relevant consumer appreciates a descriptive meaning, the less likely it is to be registerable. The last guideline was that you needed to make an assessment of the relevance of the characteristic in relation to the product in question. The more central the characteristic to the goods in question, the more likely that a descriptive designator should be refused registration.
The second area that the AG chose to re-visit was the way in which Baby-Dry should be applied. In that case it was held that it was unique juxtaposition of the elements that made the mark non-descriptive. Other factors that could assist in attaining registration included words with an unusual structure, those having resistance to grammatical analysis or those having missing elements. Wrigley's tried to rely upon the Baby-Dry ruling to support Doublemint on the basis that the English word Doublemint did not exist in the dictionary. This was rejected by the AG. He felt that even though a word may have one of these elements in its composition, you also had to look at the degree of the particular modification and there was some minimal level of change that was required. Doublemint did not satisfy this minimum.
There are still questions over the Baby-Dry judgment and it is still argued that Baby-Dry should not have passed the test required by Article 7(1)(c). The AG decision in the Doublemint case may go some way to showing that the threshold for Article 7(1)(c) is not as low as it was thought, and a potential trade mark must incorporate more than some minor grammatical alteration in order to pass the test. If there is a line to be drawn it appears, for now, to have been drawn between Baby-Dry and Doublemint. However, it remains to be seen whether the full court of the ECJ follows the AG.
Also published in the June 2003 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.