ECJ Appeal – Admissibility – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – ‘BABY-DRY’.
The purpose of the prohibition of registration of purely descriptive signs as trade marks is to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function. If a real difference could be seen between the words used in a trade mark application, and their normal usage, the rules disallowing the registration of purely descriptive marks was not to be applied. Although the words in ‘Baby-Dry’ were separately descriptive, the combination was not ordinary usage. For trade marks composed of words, descriptiveness is viewed in relation, not only to each word taken separately, but also to the whole which they formed, and in the eyes of a native speaker. Though the phrase did deliver a description, the non-standard ordering was enough to disallow refusal of registration.
Judges:
GC Rodriguez Iglesias, President and Judges C. Gulmann, M. Wathelet, V. Skouris, J.-P. Puissochet, P. Jann, L. Sevon, R. Schintgen, F. Macken, N. Colneric and S. von Bahr Advocate General F. G. Jacobs
Citations:
Times 03-Oct-2001, [2002] Ch 82, [2002] ETMR 22, [2001] EUECJ C-383/99P, C-383/99, [2001] ECR I-6251, [2001] EUECJ C-383/99
Links:
Statutes:
Council Regulation (EC) No 40/94 7(1) 12
Jurisdiction:
European
Cited by:
Cited – Dyson Limited v The Registrar of Trade Marks ChD 15-May-2003
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
Cited – Special Effects Ltd v L’Oreal Sa and Another CA 12-Jan-2007
The defendants had opposed the grant of the trade mark which they were now accused of infringing. The claimants said that having failed at the opposition stage, they were now estopped from challenging the validity of the mark.
Held: It was not . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 June 2022; Ref: scu.166227
