Trade Mark Newsletter July 2003
Contents:
Is your company taking full financial advantage of
its trade mark rights?
Saxon Band Name - Trade Mark Registration Invalid
Exam Success
Latest Case Law on Shape Marks in the United Kingdom
and European Union
Arsenal v. Reed - The Case Continues
Anti-Dilution in the EU
Davidoff & Cie SA and Zino Davidoff SA v
Gofkid Limited (ECJ 9th January 2003)
BABY-DRY v. DOUBLEMINT – Where to Draw the
Line?
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Is Your Company Taking Full Financial
Advantage of its Trade Mark Rights?
Recently, the Institute of Trade Mark Attorneys (ITMA) commissioned
a Professor from UMIST to investigate how small and medium sized
enterprises were exploiting their trade marks.
The report indicates that SMEs are slow to appreciate that they
hold valuable and tangible assets, in the shape of trade marks and
other IP rights, which can be exploited to generate additional income
streams, or to raise project finance.
Difficulties in raising finance are often cited as SMEs as a major
obstacle to growth, but they may have overlooked the fact that their
brand names are one potential source of such finance.
By contrast, major corporations are more used to leveraging their
IP rights and, in particular, their well known brands, to secure
additional lending. In 1997, Calvin Klein raised US $58 million
on a seven year securitised loan, whose interest and principal repayments
were funded from royalty receipts linked to their sales of CK perfume
products.
In some cases, a company’s trade mark portfolio may have a
value which exceeds that enjoyed by the tangible assets; failure
to recognise this led to problems for Volkswagen when they purchased
the business of Rolls Royce Motor Company in 1998 at a reported
acquisition price of £479 million. However, the ROLLS ROYCE
trade mark rights were acquired separately by BMW for a knock-down
price of £40 million. One may wonder who got the better deal
in these circumstances.If trade mark rights are to be fully exploited
and retain their value as vehicles for corporate finance, it is
vital to obtain trade mark registration. Unregistered trade marks
never command the same market value, since there are often difficulties
in proving claims to common-law monopoly rights based on mere use
of a brand. One of the first questions that venture capital institutions
ask their potential clients is whether they have registered their
trade marks, and it is not uncommon to see entries on the UK Trade
Marks Register where security interests have been granting to lending
institutions as part of a financing deal.
We recommend a regular “health check” in the shape of
an audit of your trade mark portfolio to ensure that registrations
are taken out for all valuable brands and that registered coverage
is adequate to reflect the current scope of business activities.
It is surprisingly easy to forget that the company is now operating
in new markets without having registered trade mark protection.
Please contact any of this firm’s trade mark advisors for
more information as to how to conduct such a trade mark audit, or
guidelines for trade mark protection.
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Saxon Band Name - Trade Mark Registration
Invalid
Disputes between current and former members of well known bands
over ownership of the band name are not uncommon – particularly
given the potential commercial value of such names and where the
matter is not already clearly covered by appropriate contractual
arrangements.
In the case of Byford v Oliver and Dawson the High Court recently
overturned an initial decision by the UK Trade Marks Registry and
as a result declared invalid a trademark registration for the mark
SAXON in the name of two of the bands original members.
The SAXON heavy metal rock band was founded at the end of the 1970s
– Messrs “Biff” Byford (vocals), Oliver (guitar)
and Dawson (bass) were three of the founder members.
SAXON achieved considerable success in the United Kingdom and elsewhere
both in terms of music sales, tours and media exposure.
Dawson left the band in 1986 and Oliver left in 1995 – although
the band SAXON fronted by “Biff” Byford continued with
various changes of line up. Following their departures Oliver and
Dawson performed under various names comprising SAXON (often presented
in the same gothic script as that associated with the original band)
but accompanied by other matter in particular OLIVER DAWSON SAXON
- although seemingly not in a form using SAXON alone.
In 1997 Oliver and Dawson applied to register SAXON per se as a
trademark in the United Kingdom covering classes 9, 16 and 41 and
subsequently attempted to use the resulting registration to hamper
use of SAXON by the Byford led band.
Byford then applied to the UK Trade Marks Office for a Declaration
of Invalidity against the registration by Oliver and Dawson on the
basis that:
a) Use of SAXON by Oliver/Dawson would be liable to be prevented
by an action for “passing-off”.
b) The registration was applied for in bad faith.
In the Trade Marks Registry the Hearing Office decided that each
of the original members of the band had common law rights in the
name of SAXON dating back to the band’s original formation
and as such Byford could not have “earlier rights” than
Oliver/Dawson and Oliver/Dawson could not be said to have applied
to register the mark in bad faith.
Byford appealed the decision to the High Court where Laddie J.
reversed the decision and held that contrary to the Hearing Officer’s
view the name and goodwill were assets of the particular partnership
and not the individuals. He also found that when Dawson left the
group in 1986 (i.e. ten years prior to the filing of the application)
he abandoned his interests in the name and goodwill and although
a position was not so clear regarding Mr Oliver (who had left only
two years prior to the filing of the trademark) it did not appear
that following his departure he had asserted rights in the mark
SAXON per se.
The judge therefore concluded that the recent goodwill and name
belonged to the reformed SAXON band(s) led by Mr Byford and as such,
the registration of SAXON by Oliver/Dawson was declared invalid
on the basis that use of the mark would amount to “passing
off” and was applied for in bad faith.
It must be said that the finding in this case appears to be dependent
to some extent upon particular facts and it is far from clear that
the same outcome would apply in all cases.
However the case highlights the need for clear contractual terms
in any agreement between members of bands or other entertainment
providers as to entitlement to the band name and trade marks, especially
when the original members leave (or reform).
Exam Success
Congratulations to Kara Bearfield, D Young & Co Trade Mark Associate,
June 2003. The partners of D Young & Co are pleased to announce
that Kara Bearfield has passed the Institute of Trade Mark Attorneys’
Qualifying Examination and therefore becomes the firm’s newest
trade mark associate. Kara has a degree in Applied and Human Biology
from Aston University and a Post Graduate Degree in Management of
Intellectual Property Law from Queen Mary and Westfield College,
University of London.
Kara joined the D Young & Co trade mark team in 2000 having
gained experience in the field of trade mark protection in industry
and private practice since 1998.
The firm wishes Kara the best of luck in her new role within our
Southampton office team.
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Latest Case Law on Shape Marks in
the United Kingdom and European Union
Three recent cases involving shape marks have underlined the difficulties
in obtaining registration of this type of mark at both UK and EU
level:
1 Axion S.A. vs. OHIM (European Court of First Instance)
This case involves two applications to register the shapes of a
cigar and a gold ingot as Community trade marks. The goods applied
for were “chocolate, chocolate goods; pastry and confectionery”
(the cigar mark) and “chocolate, chocolate goods” and
“cardboard packaging in the form of a gold ingot for chocolate
and chocolate goods” (the “ingot” mark). Both applications
were objected to under Article 7(1)(b) of the CTM Regulation on
the grounds that they are “devoid of distinctive character”,
and this objection was upheld by OHIM’s Board of Appeal.
On appeal to the Court of First Instance (the CFI), the applicant
sought to argue that a minimum degree of distinctiveness is sufficient
for a trade mark to qualify as distinctive and registrable. They
also claimed that the respective shapes of the marks are unusual,
arbitrary and different from the usual shape of those goods or their
packaging.
It was held, however, that although Article 7(1)(b) of the CTM
Regulation does not distinguish between different categories of
marks “the average consumer does not subject the shape and
colour of the products concerned to close analysis, but accords
them only fleeting attention”. In view of the fact that there
are other goods on the market with similar shapes to both the “cigar”
and “ingot” applications, the differences in shape and
colour relied upon by the applicant were not held to be sufficient
to confer distinctive character to the marks.
2 The Procter & Gamble Company vs. OHIM (European Court
of First Instance)
Similar considerations applied in The Procter & Gamble Company’s
appeal against the refusal of its Community trade mark application
for the shape of a bar of soap. This application was objected under
Article 7(1)(b) on distinctiveness grounds, and also on the basis
that the sign consists exclusively of the shape resulting from the
nature of the goods themselves (Article 7(1)(e)(i)) and is a shape
which is necessary to obtain a technical result (Article 7(1)(e)(ii)).
These last two grounds of objection are unique to shape marks.
In the course of the appeal, the applicant argued that the trade
mark applied for is very different from the traditional soap bar
shape, because it has a concave profile on the longitudinal side.
It was also argued that the shapes of goods that are visible in
the normal course of usage (such as soap) are “more durable”
as trade marks than are word marks, as the shape is the most visible
element.
The CFI, however, rejected the applicant’s claims that the
shape is inherently distinctive; on the contrary it was held that
the mark applied for is only a slight variation on the various shapes
commonly used in respect of soap. Further, even if the consumer
did notice the concave profile of the soap, the CFI did not think
that he would immediately perceive this shape as an indication of
trade origin. Conversely, it was held that the concave profile would
be interpreted as either a functional feature making the soap easier
to grip, or merely aesthetic. Accordingly, the refusal of this application
was upheld. The case is now on appeal to the ECJ.
3 Bongrain S.A. vs. the UK Trade Marks Registry (UK High Court)
The case involved an application to register a series of two three
dimensional marks comprising a six lobed shape resembling a flower
for “cheese and dairy products”. The application was objected
on distinctiveness grounds.
In the appeal against the Registry’s refusal of the application,
the Judge upheld the Hearing Officer’s view that the shape
was neither striking nor memorable, and is devoid of distinctive
character. Although evidence of use was filed, this showed that
the trade mark SAINT ALBRAY was printed on each segment of the cheese,
and it was held that this word mark, rather than the shape of the
goods, would be seen as the trade mark.
It seems, therefore that whilst the Courts accept that the criteria
for assessing the distinctiveness of a mark comprising the three
dimensional shape of the goods or their packaging are not different
from those that apply to other types of mark, they are taking the
view that the shape of goods does not communicate information as
to trade origin in the same way as, for example, word or device
marks. This is the case notwithstanding the fact that the shape
applied for may be novel and/or enjoy a high level of recognition
on the part of a public; the Courts have held that it does not necessarily
follow that the shape has a trade mark function, in that it indicates
the origin of the goods.
Accordingly, it is likely to continue to be very difficult to obtain
registration of shape marks unless the public is educated into perceiving
the shape of the goods as an indicator of origin.
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Arsenal v. Reed - The Case Continues
Brand owners in the UK have been eagerly waiting for the next instalment
of the court saga that is Arsenal Football Club v M. Reed. The issue
of whether a trade mark owner must establish that an unauthorised
vendor is using the registered trade mark “in a trade mark
sense” in order to succeed in an infringement action is also
of obvious interest to many street traders selling unauthorised
merchandise bearing well-known marks.
The Court of Appeal have now added their interpretation of the
European Court of Justice’s findings on trade mark infringement
to the mix. In the original High Court proceedings Mr. Justice Laddie
found, as a matter of fact, that Reed’s use of the Arsenal
trade marks on scarves, t-shirts and other merchandise, would be
perceived by consumers as a badge of support or allegiance to the
Arsenal team rather than an indication of the origin of the goods,
ie. “trade mark use”. On referral of the question whether
trade mark use was required to establish infringement, the ECJ appeared
to answer “yes”, and then make a finding of fact to the
effect that Reed’s use of the marks created “the impression
that there is a material link in the course of trade between the
goods concerned and the trade mark proprietor”. Accordingly,
the ECJ held that in the circumstances of the case, the defendant
had infringed Arsenal’s registered trade marks, despite the
presence of a notice at Mr. Reed’s stall warning customers
that the goods were not official Arsenal merchandise.
When the case was returned to the UK High Court, Mr. Justice Laddie
held that in making a contrary finding of fact, the ECJ had exceeded
its jurisdiction. Applying the ECJ’s guidance on the law to
the facts as he found them, the Judge dismissed Arsenal’s claim
for trade mark infringement.
Reed’s appeal presented the Court of Appeal with the task
of trying to reconcile these apparently diverging points of view,
whilst being bound by the ECJ’s reasoning. In the Court’s
view, the ECJ had reformulated the referred questions to consider
not whether the use complained of was “trade mark use”
but whether such use was liable “to jeopardise the guarantee
of origin which constitutes the essential function of the mark”.
The distinction requires a Court to consider the effect of the unauthorised
use on a registered proprietor’s trade mark rights. Accordingly,
the Court of Appeal felt that the ECJ’s conclusions were not
inconsistent with the High Court’s finding that Mr Reed’s
use was not trade mark use. They held that the Judge had failed
to consider the effect of the Arsenal marks where the merchandise
was taken away from Mr Reed’s stall bearing the notice that
the merchandise was “unofficial”. To “secondary”
consumers the marks would create the impression of a material link
between the goods and the Arsenal Football Club. That impression
would not be affected by the public’s view of those signs as
a badge of support for or affiliation to the club.
Although not strictly necessary, the Court went on to consider
whether Mr. Reed’s use might have indeed been trade mark use,
and concluded on the evidence that a substantial number of consumers
perceived the trade marks as designating the origin of the goods,
in addition to also being considered badges of allegiance.
The Court of Appeal’s interpretation of the ECJ’s ruling
potentially broadens the scope of infringement under the identical
mark/identical goods provisions, as it is not necessary to show
that the unauthorised use is “trade mark” use, i.e. denoting
the origin of the goods, nor that confusion has arisen. Of course,
not all situations in which an identical mark is used in relation
to identical goods will infringe – if the use will not harm
the ability of the trade mark to distinguish the goods, no infringement
will occur. Purely descriptive use will not, therefore, affect the
registered rights.Owners of “merchandise” marks will be
quick to argue that the decorative use of a trade mark on merchandise
may jeopardise the essential function of their registered trade
mark rights, and it seems that attempts at point of sale to educate
consumers of the actual origin of the goods will not necessarily
avoid an infringement action. The implications are clearly positive
for trade mark owners engaged in brand merchandising in the light
of this decision. However, Mr. Reed raised no positive defences
to the infringement action, particularly the argument that he was
using the Arsenal trade marks as indications concerning the kind
of goods or to indicate other characteristics such as a badge of
allegiance. Whether such a defence might still succeed remains to
be seen.
However, the saga may not yet be over. The more recent decision
from the House of Lords in the counterfeiting case of R v. Johnstone
appears to have been reached without sight of the latest Arsenal
judgement. In contrast to the Court of Appeal, the Law Lords appear
to have concluded that the ECJ’s reasoning requires trade mark
use for a successful infringement action. Perhaps a further appeal
by Mr. Reed will finally settle this issue.
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Anti-Dilution in the EU: Davidoff &
Cie SA and Zino Davidoff SA v Gofkid Limited (ECJ 9th January 2003)
FACTS OF THE CASE
The proprietor of the well known brand DAVIDOFF held registrations
for DAVIDOFF in stylised letters for jewellery and smokers’
articles.
Gofkid owned a German registration for DURFFEE for similar goods.
This mark was used by Gofkid in Germany in the same script as that
used by Davidoff (with the letters “D” and “FF”
in the same distinctive manner).
As both the trade marks and the goods were similar, according to
the current interpretation of the Harmonisation Directive (891/104
EEC), Davidoff would be required to prove a likelihood of confusion
before being able to succeed against Gofkid in an action for infringement.
This seemed to put Davidoff in a worse position than if Gofkid
had actually used their trade mark on dissimilar goods, since in
this situation there would have been no need for Davidoff to prove
confusion but simply that Gofkid’s use of the trade mark took
unfair advantage of or was detrimental to the distinctive character
or repute of Davidoff’s famous trade mark.
A reference was therefore made to the ECJ to ask whether Articles
4(4)(a) and 5(2) of the Directive (set out below) are to be interpreted
as entitling the Member States to provide specific protection for
registered trade marks with a reputation in cases where the later
mark or sign (which is identical with or similar to the registered
trade mark), is intended to be used or is used for goods or services
identical with or similar to those covered by the registered mark.
THE ISSUES
Davidoff argued that the first question must be answered in the
affirmative on the ground that the specific protection given to
marks with a reputation under Articles 4(4)(a) and 5(2) for non-similar
goods must apply a fortiori to goods which are identical or similar.
Conversely Gofkid contended that the question must be answered
in the negative as being the solution most in line with the wording
of the provisions. Sufficient protection of marks with a reputation
was already ensured by Articles 4(1)(b) and 5(1)(b) of the Directive
since, according to the case law (in particular Sabel v. Puma and
Canon), a likelihood of confusion is more readily found in cases
where the mark enjoys a reputation.
In its conclusions, the ECJ found that Articles 4(4)(a) and 5(2)
cannot be given an interpretation which would lead to marks with
a reputation having less protection where a sign is used for identical
or similar goods or services, then where a sign is used for non-similar
goods or services.
COMMENT
This decision has been heralded as extending the anti-dilution law
in the EU, and providing greater protection for proprietors of well
known trade marks. Whether the effects of this decision will make
their way into UK law remains to be seen. EU Directives are not
directly effective in national law. The UK parliament has to implement
the terms of the Harmonisation Directive into UK legislation. Articles
4(4)(a) and 5(2) of the Directive have of course been implemented
into Sections 5(3) and 10(3) of the Trade Marks Act 1994 (see over).
However, the wording of these latter provisions seems unambiguous
–protection is afforded to a trade mark proprietor with a reputation
who can prove unfair advantage or detriment to the distinctive character
or repute of his trade mark, only where the relevant goods or services
are not similar to those for which the trade mark is registered.
That said however the UK courts do tend to look to the Directive
for guidance in interpreting national legislation and must correspondingly
be influenced by the ECJ’s interpretation of that Directive.
It is therefore possible that Sections 5(3) and 10(3) will now be
applied to prevent third parties using well known marks on identical
or similar goods and services where this causes detriment to the
prior rights owner.
This result would clearly be more satisfactory for the proprietors
of well known marks by resolving the anomalies noted above. However,
it sits uneasily with the unambiguous wording of our UK Act. Future
decisions will be awaited with interest.
The Harmonisation Directive (89/104/EEC)
Article 4 – Further grounds for refusal or invalidity concerning
conflicts with earlier rights
4. Any Member State may furthermore provide that a trade mark shall
not be registered or, if registered, shall be liable to be declared
invalid where, and to the extent that:
a. the trade mark is identical with, or similar to, an earlier national
trade mark within the meaning of paragraph 2 and is to be, or has
been, registered for goods or services which are not similar to
those for which the earlier trade mark is registered, where the
earlier trade mark has a reputation in the Member State concerned
and where the use of the later trade mark without due cause would
take unfair advantage of, or be detrimental to, the distinctive
character or repute of the earlier trade mark;
Article 5 – Rights conferred by a trade mark
2. Any Member State may also provide that the proprietor shall be
entitled to prevent all third parties not having his consent from
using in the course of trade any sign which is identical with, or
similar to, the trade mark in relation to goods or services which
are not similar to those for which the trade mark is registered,
where the latter has a reputation in the Member State and where
use of that sign without due cause takes unfair advantage or, or
is detrimental to, the distinctive character or the repute of the
trade mark.
UK Trade Marks Act 1994
5. (3) A trade mark which –
(a) is identical with or similar to an earlier trade mark, and
(b) is to be registered for goods or services which are not similar
to those for which the earlier trade mark is protected, shall not
be registered if, or to the extent that, the earlier trade mark
has a reputation in the United Kingdom (or, in the case of a Community
trade mark, in the European Community) and the use of the later
mark without due cause would take unfair advantage of, or be detrimental
to, the distinctive character or the repute of the earlier trade
mark.
10. (3) a person infringes a registered trade mark if he uses in
the course of trade a sign which –
(a) is identical with or similar to the trade mark, and
(b) is used in relation to goods or services which are not similar
to those for which the trade mark is registered, where the trade
mark has a reputation in the United Kingdom and the use of the sign,
being without due cause, takes unfair advantage of, or is detrimental
to, the distinctive character or the repute of the trade mark.
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BABY-DRY v. DOUBLEMINT – Where
to Draw the Line?
Many commentators had suggested that the decision rendered by the
ECJ in BABY-DRY (case C-383/99 of 20 September 2001) represented
a high water mark when it came to accepting potentially descriptive
trade marks for registration in Europe. There was still a marked
reluctance on the part of the UK Trade Mark Registry, in particular,
to follow the findings of that case when assessing distinctiveness
for similar marks. A recent opinion from the Advocate General, Francis
Jacobs (who also provided the opinion in BABY-DRY) concerning the
trade mark DOUBLEMINT, will reinforce the more conservative tendency
in their view that BABY-DRY was definitely at one extreme of the
spectrum.
The opinion was rendered in the context of an appeal by OHIM against
the judgement of the CFI dated 31 January 2001 (case T-193/99 Wm.
Wrigley Junior Company v. OHIM). Essentially, the CFI had concluded
that DOUBLEMINT for chewing gum was acceptable because the term
was not exclusively descriptive, but instead, ambiguous and open
to various interpretations. The Advocate General points out that
this conclusion was based on an incorrect interpretation of the
relevant Article in the CTM Regulation. The CFI had found that DOUBLEMINT
was not “exclusively descriptive” because it was capable
of being given a number of different meanings by a consumer. In
fact, the test of exclusivity in Article 7(1)(c) applied to the
nature of the mark rather than its potential meaning.
On this basis alone, the judgement of the CFI appeared to require
annulment; however, the Advocate General went on to state that marks
which combine two dictionary words are unlikely to be considered
distinctive even if they have an element of ambiguity or suggestiveness
about them, provided that one of the potential meanings could be
struck down under Article 7(1)(c). In this regard, the Advocate
General relied on the CFI’s previous judgement in TRUCKCARD
(case T-358/00 of 2002).
Clearly aware of the controversy which BABY-DRY had created in
the IP world, the Advocate General then went on to explain his reasoning
in that case by reference specifically to the apparently contrary
approach which the ECJ took in the Windsurfing Chiemsee decision;
this section of his opinion appears to contain a tacit admission
that he went too far when stating that registration of descriptive
terms as trade marks could not confer an unfair advantage on their
proprietors because other traders would still be free to use such
terms as pure descriptions without infringing. In his latest opinion,
the Advocate General affirmed that “it is in the public interest
that descriptive signs may be freely used by all”, but justified
the acceptance of BABY-DRY on the basis that it still had a sufficient
added character to make it different from a simple description for
the goods.
Cynics may query what this added character consists of, since BABY-DRY
is essentially a combination of two dictionary words, both of which
have potentially descriptive connotations for nappies. It thus appears
to fail the DOUBLEMINT test. The Advocate General reiterated that
the assessment of distinctiveness must always involve an individual
decision as to whether a particular sign has purely descriptive
characteristics or some perceptible added feature which makes it
rather suggestive or allusive. He reaffirmed that BABY-DRY fell
the right side of the line.To assist practitioners/tribunals who
may find the application of Article 7(1)(c) somewhat perplexing,
he formulated the following general guidelines for assessing descriptive
character:
a) whether the proposed trade mark has a factual and objective
relationship to the product or one of its characteristics, or whether
it is more imaginative and subjective;
b) how is the term likely to be perceived, i.e. does it convey
an immediate message (in the case of an ordinary, definite and down-to-earth
term) to the consumer, or would you need the “skills of a cryptic
crossword enthusiast” to detect any connection with the designated
characteristic;
c) how significant is the characteristic which the proposed trade
mark is designed to suggest/describe in the consumer’s mind.
Where such characteristic is essential or central to the product,
or may be of particular importance when dictating the consumer’s
choice, then the mark should be refused.
Applying these tests to DOUBLEMINT, he concluded that DOUBLEMINT
was a compound term having a factual and objective reference to
mint flavour in some way doubled, and that it was readily perceivable
as such by the average consumer. Flavour was, in relation to chewing
gum, a salient feature of the product. It did not matter that neither
the particular variety of mint or the precise mode in which the
mint flavour was doubled could be discerned. These ambiguities in
no way detracted from the fact that the term designated a characteristic
of doubled mintiness.
Finally, the Advocate General considered Wrigley’s arguments
that they had existing registrations of DOUBLEMINT in a number of
EU countries at national level, as well as in Australia and the
USA and that OHIM’s failure to take these into account as viable
precedents was, in some way, reprehensible. He was able to dismiss
the precedents on the basis that they contained additional matter
of a figurative nature, or had been accepted prior to the implementation
of the Harmonization Directive, while at the same time, paying lip
service to the view that the existing of earlier national rights
should be taken into account by OHIM (but not necessarily seen as
persuasive).
In passing, the Advocate General took the opportunity to comment
on the suggestions from members of the IP profession that BABY-DRY
should have been refused because it was not sufficiently unusual
in terms of the inversion of normal word order to any speaker of
a romance language, e.g. French or Italian. He stated that it is
not appropriate to examine an English word from the perspective
of a consumer in another EU country whose language is different,
since it was generally inappropriate to take as a normal yardstick
when assessing descriptiveness, a consumer struggling with an imperfect
knowledge of a foreign tongue.In this section of his commentary,
the Advocate General used the “Windsurfing” reasoning
to justify his view that by allowing registration of BABY-DRY, Italian
consumers would not be unduly prejudiced because it would not diminish
the normal range of Italian terms which Italian purveyors of nappies
might use to describe their goods. However, he pointed out that
there could be exceptions to this approach where the English word
had acquired a separate and accepted meaning in a different country,
e.g. “handy”, which apparently is commonly used in Germany
to designate a mobile phone.
Comment
This opinion represents a clear and cogent statement of the manner
in which potentially descriptive terms should be assessed when applying
Article 7(1)(c) of the Community Trade Mark Regulation (and any
national law equivalent); it places the consumer at the centre of
the stage when the assessment of a mark’s potentially descriptive
nature is made. Inevitably, every candidate mark has to be assessed
on a case-by-case basis and there will be fluctuations in the manner
in which the standard is applied, both at OHIM and in EU member
states.
Generally however, the message is still positive; if brand owners
can devise new marks which have some element of originality (the
old UK test used to be summarised as “obviousness of derivation
does not equal obviousness of meaning”), then they will be
acceptable for registration despite the hurdles in Article 7(1)(c).
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