Descriptive trade marks and the baby dry case

Section 3(1)(c) of the Trade Mark Act 1994 (based on Art 7 (1)(c) of the CTMR) provides that a trade mark cannot be registered if it is exclusively descriptive of the character or qualities of goods, this goes hand in hand with Section 3(1)(b) which refers to distinctiveness and has become a rather large sticking point for academics and practitioners alike. In this piece I will discuss how if at all this provision has been altered by the case of Proctor and Gamble v Office for Harmonisation In the Internal Market (Trade Marks and Designs) ; Known simply as "Baby Dry"; and subsequent cases.

Previous to Baby Dry the leading case relating to descriptiveness was that of Windsurfing Chiemsee . This case established the so-called 'public interest' test i.e. descriptive words and signs should be freely available to all and not subject to restrictions, this follows the "Principle of availability" which can be seen as derivative of the traditional view of trade marks. This brings us to Baby Dry itself, at first sight it seemed to herald a new beginning for the registration of trade marks, its liberal attitude appearing to dispense with the public interest test; as found in Windsurfing Chiemsee and traceable all the way back to the Paris Convention 1883 . The basis of the Principle of availability is that it is not in the public interest for one trader to register a trade mark and thus gain a monopoly over descriptive terms as this would prevent other traders from using the same words, for example if one greengrocer trademarked the word orange then other greengrocers would face infringement suits for merely naming their products / describing see for example the work of Pfeiffer .

Proctor and Gamble's application to register Baby-Dry as a CTM (Community Trade Mark) was initially refused on the basis that the mark consisted exclusively of words that were descriptive of nappies, an appeal to the CFI (Court of First Instance) was refused as it was deemed that the main purpose of the goods was to keep a baby dry. However on appealing to the ECJ Proctor and Gamble finally found success (European Court of Justice). Whilst they conceded that the mark undoubtedly alluded to the goods function and each of the words individually referred to the purpose of the goods they nonetheless considered that: "their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics" . In layman's terms this means that you would not call a nappy a 'baby dry' and as such the term Baby Dry is not as a whole descriptive of nappies. The ECJ also discussed the importance of individual words or aspects of a trade mark. It found that what was important was the overall effect of the mark not the components that make it up. In their own words Baby and Dry were a: "lexical invention bestowing distinctive power on the mark so formed" .

At the time of the Baby Dry case academics thought that this would open the floodgates as far as protecting descriptive words was concerned as it seemed to suggest that even descriptive marks could be registered provided that they have acquired a second meaning. Initially this could be seen as being the case, as the Court of First Instance followed this approach in Zapf . But the ECJ soon dispensed with these ideas with their decision in the case of Doublemint . In this case Wrigley applied to register the mark Doublemint for chewing gum but their application was refused by the OHIM as according to the ECJ's ruling the combination of the undoubtedly descriptive words 'Double' and 'Mint' fell within the provisions of article 7(1)(c) (mirrored by S3(1)(c) of the Trade Mark Act 1994). In the opinion of the ECJ the mark Doublemint consisted exclusively of a combination of descriptive words that served merely to designate the characteristics of"mint flavoured" or "mint-scented" products. They interpreted Article 7(1)(c) as precluding from registration any mark consisting exclusively of a sign or indication where "at least one of (the) possible meanings (of such sign or indication is to) designate a characteristic of the goods or services concerned" . Specifically citing Windsurfing Chiemsee the ECJ went on to state that Art 7(1) pursued "an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all." Needless to say this decision caused much confusion as it appeared to be at the other end of the spectrum in comparison to the decision in Baby Dry , despite the fact that it explicitly did not overrule the earlier case. Perhaps a better approach can be seen in the Advocate General's precursor to the ECJ;s decision in which he proposed that a prospective trade mark should be assessed as follows:

• Relationship between mark and product Ð if the mark is used as a general description of the goods / services then the registration will be refused.
• Immediacy of realisation Ð if the mark quickly conveys the characteristics of the goods / services then it will not be registrable.
• Significance of characteristics Ð the more significant the characteristics to the product / consumers choice of the product then the grounds for refusal are higher.

Unfortunately the ECJ did not follow this proposal which would have cleared up any confusion and instead continued with its previous tests.

The next chapter in the story of the descriptiveness restrictions came in February of 2004 when the ECJ handed down two important judgements in the cases of Postkantoor and Biomild . The Biomild mark was for dairy products including 'mild flavoured yoghurt', the mark was initially refused as the mark merely conveyed the characteristics of the products concerned. More specifically the products were both "biological" and "mild" the composite mark was therefore considered to be exclusively descriptive. The Postkantoor case concerns the KPN company which applied for the mark 'post office' (Postkantoor is Dutch for Post Office). Whilst the company mostly dealt with telecoms at the time it was a state owned company also in charge of the Dutch Post Office. Its application was refused on the basis that it was solely descriptive. In the Postkantoor case Advocate General Ruiz-Jarabo Colomer sought to re-introduce the Windsurfing Chiemsee public interest formula, and criticised the Court's judgment in Baby Dry . He went on though to admit that the likelihood of a permanent step away from the Baby Dry formula is unlikely at present.

For the sake of clarity the ECJ considered both of these cases (although it did not make a ruling on them, this was left to the member states themselves to implement). It said that it was sufficient for a mark to be refused under Art 7(1)(c) "if at least one of the possible meanings (of the mark) designates a characteristic of the goods or services concerned". In order for a combination of descriptive words to qualify as a trade mark it is a requirement that "it creates an impression which is sufficiently removed" from that which is produced by simply combining the words together in a traditional sense. The ECJ went on to say that a generic word may lose its descriptiveness if 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". However the law still requires that the word itself is has not become descriptive of the goods to which the mark is affixed.

In terms of where we are now, the Baby Dry case still holds in that in order for a registration to be denied a mark must be exclusively descriptive so that if the words that make up the trade mark were capable of alternative meanings that in themselves were not descriptive then the registration would not be refused. As we have seen the Doublemint case withdrew slightly from this decision in that if at least one of the possible meanings of the mark is descriptive then the sign must be refused registration. This was followed in the Postkantoor / Biomild cases. But contrary to a lot of academic opinion this does not mean that the Baby Dry test is dead, in the cases that followed it: Doublemint , Postkantoor and Biomild the ECJ stressed that Baby Dry was not being overruled merely different interpretations were gleaned from it. So the reasoning behind the decision in Baby Dry has not been found incorrect and has in effect been reaffirmed but the tests laid down in the case must be interpreted in a more stringent way than initially envisaged.

In summary the ECJ has not so much revolutionised the descriptiveness tests merely evolved them. There was no flood of descriptive marks as feared by many commentators at the time of Baby Dry , yet the phrase "syntactically unusual juxtaposition" still holds weight in any discussion of descriptiveness. It would appear to me that despite the cases analysed above and the years of discussion entered into, the provisions of 3(1)(c) have not in practical terms changed a great deal but it is likely that this will change in the years to come. An example of this can be seen in the recently decided Philips v Remington case that whilst it itself is concerned with distinctiveness and the registration of shape marks it shows the ECJ's willingness to return to the "principle of availability", this could yet see a return to the public interest test (or more likely a variation of) found in Windsurfing Chiemsee .