Choosing a brand name requires careful consideration. Think about your target customers, positioning in the market, finance and protection. As a brand management adviser at Pictons Solicitors Emma Lambert is aware that there is a common misconception that a brand should describe the product or service being provided. From a trade mark and durable brand point of view this is not the case. In this article Emma examines the current legal approach to descriptive trade marks and sets out practical points for choosing your brand names.

Under EU and UK trade mark legislation a mark that describes the goods or services to which it is applied is barred from registration1.

In the last two years there have been various cases2 which have considered the registrability of trade marks (in the UK and in the EU) which are descriptive of the characteristics of the products for which the mark is to be used. These cases (BABY-DRY, DOUBLEMINT and POSTKANTOOR) hold important lessons for brand owners. This article will provide you with practical guidelines for the development of your own brand.

BABY-DRY Nappies

In this case the European Court of Justice (‘ECJ’) stated that the mark BABY-DRY was not descriptive of nappies and was therefore registrable.

The juxtaposition of the words ‘Baby’ and ‘Dry’ was considered not to be a familiar way of referring to nappies in normal English usage. Further, the arrangement of the words was unusual; a step away from their descriptive meaning. Advocate-General Jacobs explained that, if the skills of a cryptic crossword enthusiast would be needed to make a connection between the mark and the goods then it would be unlikely that a regular consumer would detect a connection. Instead, the consumer is more likely to think of a selection of products rather than a single product - nappies.

BABY-DRY is widely seen by trade mark experts as a high watermark for the protection of apparently descriptive marks, making it easier to register them.

DOUBLE-MINT Chewing Gum

Trade mark examiners still take account of the BABY-DRY judgement but the outcome of the DOUBLEMINT case marked a less favourable approach to descriptive brands.

Wrigleys applied to register DOUBLEMINT as a Community Trade Mark. The application was rejected on the grounds that the mark described the goods – chewing gum. The matter was strongly contested and eventually found itself at the ECJ.

In reaching his decision Advocate-General Jacobs (one of three Judges on the panel) devised a three pronged test3. In doing so he acknowledged that the test was subjective – each case must be considered within its relevant circumstances and on its own merits. It was not necessary for a mark to fail all three elements of the test for it to be rendered unregistrable - failure of just one element would be sufficient.

The Three-Pronged Test

  1. Is the mark closely related to the product – and therefore likely to be used as a general description in the particular trade? (Remember: a trade mark is a monopoly right and will not be granted if registration will prevent others in the trade from using words or signs which are indigenous to their trade). The key to passing this test is to choose a mark that does not have a clear connection with the product. An example of a mark that might be rejected is ‘ROSE’ for florist services.

    2. In the DOUBLEMINT case it was held that using the two descriptive words ‘Double’ and ‘Mint’ together creates a factual characteristic – mint that is doubled in some way.

  2. How ordinary is the mark? If the mark very quickly transmits to the customer characteristics of the goods/services then it is likely to be unregistrable.

    3. Applied to DOUBLEMINT the Judges felt that the consumer is quickly going to conclude that the goods are concerned with mint that is doubled in some way.

  3. Finally, consider the importance to the consumer of the characteristics the mark alludes to. If those characteristics are intrinsic to the product or the consumer’s choice of product, then again the case for refusing registration on the grounds of descriptiveness is a strong one.

It was held that the mint flavour of the DOUBLEMINT chewing gum is a key characteristic of the goods.

POSTKANTOOR Postage Services

In this case a Dutch company had applied to the Benelux Trade Mark Office to register POSTKANTOOR for various goods and services including postage-stamps, transport, education, paper and technical information. The application was denied on the grounds that the mark was exclusively descriptive of these goods. This decision was challenged and various questions were referred to the ECJ by the appeal court in The Hague.

The guidance passed down from the ECJ supported the findings in DOUBLEMINT and BABY-DRY:

  • When deciding whether a mark is descriptive, the trade mark office must consider all of the surrounding circumstances;
  • Although there may be various ways the mark could be interpreted, if one is descriptive the registration will be barred;
  • Even if the component words of the mark when considered on their own are descriptive, it does not follow that, when they are put together as one word, that word will also be considered descriptive. On the contrary, the word may be non-descriptive and so may be registrable

It is the entire mark that is judged not its parts – although there is an assumption that the mark will be descriptive unless there is, what was termed in BABY-DRY, a ‘perceptible difference’ between the individual words and the mark as a whole. Advocate-General Ruiz-Jarob set down guidelines as to what a ‘perceptible difference’ is. He stated that there will be a a perceptible difference if:
  • the overall impression of the mark is a step on from the descriptive element of the words so that it creates a completely different impression; or
  • the new word has entered into everyday language and now has its own meaning

Practical Points For Creating Your New Brands

  • Avoid brands which have one or more meanings which are descriptive of your goods/services or their characteristics.

(Counsel for Wrigleys DOUBLEMINT argued that there were various meanings to the mark and so it was not descriptive but ambiguous. This was not accepted, as whichever meaning the Judges considered the mark still described the core characteristic of the product – a mint flavoured product).
  • A trade mark which comprises descriptive elements, but which has been arrived at by way of an ellipsis (an improper grammatical construction of a phrase commonly used in trade) may be acceptable. However, marks comprising of mere abbreviations or shorthand for terms used in the trade to designate goods/services will not be acceptable.
  • Examiners will also assess whether the mark is used by third parties to identify goods/services in a particular trade. The descriptiveness of the sign will be considered at the date of the application and for possible future uses that are foreseeable at that time – so think of your future uses for the brand (see Trade Mark Registration - v – Trade Mark Use).

  • When judging whether a mark consists exclusively of a description of goods/services, the differences between the mark and the designated characteristics must be detectable by a consumer.

  • Logos will be approached in the same way as marks for the purposes of assessing descriptiveness.

If You Remember Nothing Else Remember This:

  • Choose a mark that does not and cannot be considered to describe your goods/services. Good examples of non-descriptive marks are Amazon for books and Apple for computers;
  • If you are commissioning a marketing company to produce a brand name or logo ensure that the company is fully versed with the practice points above; and
  • If you really need/want a descriptive mark to transmit your marketing message, take the plunge and try to register it. The case law is inconsistent and you might just succeed – BABY-DRY did!

The practice points offer guidance as to how the examiners will approach trade mark applications. Be warned - this is not an exact science. Each case is different and must be judged on its own circumstances.

FOOTNOTES

1.Section 3 (1) (c) Trade Marks Act 1994 (First Council Directive 89/104/EEC Article 3 (1) (c)); Regulation 40/94 7 (1) (c)

2. Procter & Gamble Co. v OHIM [2002] E.T.M.R 22 (3) – BABY-DRY; Wm Wrigley Jr v OHIM Case C-191/01, ECJ Decision 23 October 2003 unreported – DOUBLEMINT; Koninklijke KPN Nederland NV v Benelux-Merkenbureau, Case C-363/99 12 February 2004

3. Advocate-General Jacobs sub nom OHIM V Wm Wrigley Jr. Company [2003]E.T.M.R 1058 (88) The rest of the panel did not comment on Advocate-General Jacobs’ proposed test and so it is not clear whether it will be applied more broadly. However, it is still a useful breakdown of the abstract principles to be considered

© Pictons 2004

Pictons Solicitors is regulated by the Law Society. The information in this article is correct at the time of publication in January 2004. Every care is taken in the preparation of this article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.

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