Descriptive character of a CTM: Baby-dry and 3D tablets cases
26.10.2001
The European Court of First Instance and the European Court of Justice have delivered important judgments concerning the distinctive character of Community trademarks : "Baby-dry" and "3D tablets" cases.
The European Court of First Instance and the European Court of Justice have delivered important judgments concerning the distinctive character of Community trademarks : "Baby-dry" and "3D tablets" cases.1) Baby-Dry (
C-383/99 P)The factsThe applicant filed on April 3, 1996 the mark "Baby-dry" to designate disposable diapers made out of paper or cellulose and diapers made out of textile.The application has been refused by the OHIM's examiner, then by the First Board of Appeal because the mark consisted exclusively of words which may serve, in trade, to designate the intended purpose of goods.The Board of Appeal also found inadmissible the appelant's submission concerning the distinctive character acquired through use of the sign (Article 7(3) of the Regulation), on the ground that it had not been made earlier to the examiner.On July 8, 1999, the Court of First Instance uphold that the sign "Baby-dry" is not distinctive.As for the acquisition of the distinctivity through use, the Court found admissible the applicant evidences submitted to the Court because of the continuity between acts of the examiners and acts of the boards of appeal.The Judgment of the Court of Justice of September 20, 2001According to Article 7(1) of the Regulation, trade marks are not to be registered if they are devoid of distinctive character (Article 7(1)b) or if they consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or services (Article 7(1)c).Furthermore, under Article 12 of the Regulation, the rights conferred by the trade mark do not entitle the proprietor to prohibit a third party from using, in course of trade, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or the time of rendering the service, or other characteristics of the goods or services, provided he uses them in accordance with honest practices in industrial or commercial matters.As regards trade marks composed of words, descriptiveness must be determined not only in relation to each word taken separately, but also in relation to the whole which they form. 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 is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.The word combination "Baby-dry", whilst it does unquestionably allude to the function which the goods are supposed to fulfil, it may not be viewed as a normal way of referring to these goods or of representing their essential characteristics in common parlance.The syntactically unusual juxtaposition of the words baby and dry is not a familiar expression in the English language, either for designating these goods or for describing their essential characteristics.According to the ECJ, the sign Baby-dry is a lexical invention bestowing distinctive power on the mark so formed.It is the first time that the ECJ helds on the validity of a Community trade mark. Until there, the appreciation of the distinctive character of an application by the OHIM was considered as being strict. The Office should probably be less severe from now.2) "3D tablets" cases (
T-118/00 and others)A number of figurative or three-dimensional marks representing tablets (square white and light green tablet, square with yellow and blue speckles tablet, round white and red tablet ...) have been filed by two different applicants to designate in particular washing machine and dishwasher tablets in class 3.All these marks have been refused for registration by the OHIM because of lack of distinctive character to designate washing machine and dishwasher tablets.The Board of Appeal has held these refusals, because a trade mark shall allow to distinguish the products according to their origin and not their nature.With 11 judgments dated September 19, 2001, the European Court of First Instance held the decisions of the Board of Appeal :- a mark which enables the goods or services in respect of which registration of the mark has been sought to be distinguished as to their origin is to be considered as having a distinctive character ;- the criteria for assessing the distintive character of figurative or three-dimensional trade marks consisting of the shape of the product itself are not different from those applicable to other categories of trade marks. Nevertheless, account must be taken of the fact that the perception of the relevant section of the public is not necessarily the same.- the way in which the public concerned perceives a trade mark is influenced by the average consumer's level of attention, which is likely to vary according to the category of goods or services in question ;- for a mark consisting of the representation of the product, it is appropriate to ascertain whether the mark applied for will enable the members of the public targeted to distinguish the products concerned from those having a different trade origin when they come to select a product for purchase ;- the fact that the tablets comprise two layers, speckles of different colors... is, according to the Court, "the typical presentation of detergent products". The different filed combinations are, for the Court, "variants on the basic shape that came naturally on mind".Thus, the Court conclude that "given the overall impression created by the combination of the shape and pattern of the tablets, the marks applied for do not enable consumers to distinguish the products concerned from those having a different trade origin when they come to select a product for purchase".The trade mark applications have been refused in so far as they concern washing machine and diswasher tablets.These judgments underline the difficulty for obtaining the registration of a three-dimensional Community trade mark representing the shape of the designated products when the applicant does not submit evidences for the acquisition of the distinctive character through use according to Article 7(3) of the Regulation.Is is therefore recommended to protect the shape of a product by applying for a design & model, and thereafter filing a three-dimensional mark when the shape has acquired a distinctive character.
