• DESCRIPTIVE MARKS

    Do You Know Them When You See Them?

    The public interest in keeping descriptive indications freely available for all is a fundamental principle of trade mark law. Just what signs are descriptive, however, is not always obvious.

    Just how fine the analysis can be is apparent from three recent judgments of the European Court of Justice, which contain useful guidance on how to assess the descriptiveness of neologisms and the effect of specification restrictions under Article 3 (1) (c) of the European Union’s Trade Marks Harmonisation Directive (89/104/EEC).

     

    UNIVERSALTELEFONBUCH
    Case C-326/01 P

    In this case, Telefon & Buch VerlagsgmbH applied to register UNIVERSALTELEFONBUCH and UNIV-ERSALKOMMUNIKATIONSVERZEICH-NIS as Community Trade Marks for data carriers, printed matter, publishing services and the editing of written texts. In German, the marks meant “universal telephone book” and “universal communications directory.”

    OHIM rejected the applications under Articles 7 (1) (b) and (c) of the Community Trade Mark Regulation (Council Regulation 40/94), equivalent to Articles 3 (1) (b) and (c) of the Directive, finding the words to be devoid of any distinctive character and capable of being used in trade to describe characteristics of the goods and services.

    On appeal, Telefon argued that the words were not purely descriptive because they were unusual juxtapositions of existing words which did not convey direct and immediate information on the goods and services claimed. As neologisms, the marks had never been used before and there was no underlying need to keep them available for all.

    The ECJ was not persuaded. It observed that Article 7 (1) (c) was intended to secure the public interest in keeping signs and indications which describe characteristics of goods or services free for use by all. Following the ECJ’s earlier ruling in DOUBLEMINT (Case C-191/01 P), it was not necessary that the indications be in descriptive use now. The capacity of the words to be used descriptively in the future was enough to justify refusal. The absence of a current market for “universal telephone or communication directories” was not, therefore, determinative.

    The test for whether a sign had the potential for future descriptiveness was whether it could be reasonably envisaged that the relevant public would associate the sign with characteristics of the goods or services in the future. Such an association had to be specific, direct, immediate, and without the need for further reflection. In this case, the ECJ agreed that the marks had descriptive potential and upheld OHIM’s refusal.

    BIOMILD
    Case C-265/00

    Neologisms were further considered in the case of Campina Melkunie BV v. Benelux-Merkenbureau, a reference under Article 234 EC for guidance on the meaning of Article 3 (1) (c) of the Directive.

    Here, Campina had applied to register BIOMILD before the Benelux Trademark Office for foods including milk products. The mark was in use for a mild-flavoured yoghurt. The BTMO had rejected the application on the grounds that BIOMILD conveyed the message that the goods were both “biological” and “mild,” and was therefore descriptive under Article 3 (1) (c) and devoid of distinctiveness under Article 3 (1) (b).

    On appeal to the Benelux-Gerechtshof, the ECJ was asked to rule on whether and when a neologism composed of descriptive elements may itself be regarded as not descriptive of characteristics of the goods claimed.

    The ECJ held that, as a rule, a verbal neologism which consists only of descriptive components, without any unusual variations as to syntax or meaning, is likely itself to be descriptive. However, it was necessary to assess, both visually and aurally, whether the neologism creates an impression which is different, or goes further, than the impression made by the simple descriptive combination. If so, it was possible that the mark would not be perceived descriptively by the relevant public. The neologism would in that case be more than the mere sum of its descriptive parts.

    A neologism composed only of descriptive elements relevant to the goods or services claimed would therefore be objectionable under Article 3 (1) (c) “unless there is a perceptible difference between the neologism and the mere sum of its parts.”

    POSTKANTOOR
    Case C-363/99

    In this complex reference from the Dutch Regional Court of Appeal, the ECJ was asked to consider nine questions on Article 3 (1), including:

    • whether Article 3 (1) (c) applies where there are more usual ways of denoting characteristics of the goods and services;

    • the overlap between Article 3 (1) (b) and (c);

    • whether it was relevant under Article 3 (1) (c) whether the characteristics described by a mark were essential or ancillary to the goods or services claimed;

    • whether a mark that would otherwise be objectionable under Article 3 (1) (c) could nevertheless be registered on condition that the goods or services claimed do not possess a certain characteristic.

     

    Koninklijke KPN Nederland NV had applied to register POSTKANTOOR with the Benelux Trademark Office for goods and services in Classes 16, 35 – 39, 41 and 42 including paper, advertising, insurance, stamps and construction. The word meant “post office” in Dutch.

    The BTMO refused the application on the grounds that the mark was descriptive of goods and services that could be provided by a post office.

    On a reference from the Dutch appeal court, the ECJ held that the availability of other, more usual ways of describing characteristics of the goods or services claimed was irrelevant under Article 3 (1) (c). It was sufficient to justify refusal if the mark “currently represents, in the mind of the relevant class of persons, a description of the characteristics… or it was reasonable to assume that that might be the case in the future.” There was no requirement that the sign be the only way to denote those characteristics.

    The ECJ acknowledged some overlap between Article 3 (1) (b) and (c), but the mere absence of descriptiveness under Article 3 (1) (c) did not automatically equate with distinctiveness. Each provision had its own separate underlying public interest and required a separate examination. A national office could not conclude that a mark was distinctive simply because it was not descriptive.

    Where a mark was found to be descriptive, it was irrelevant whether the characteristics denoted were essential to the goods or services or merely ancillary. Moreover, it was not open to a national office to accept a descriptive mark on the condition that the goods or services do not possess the characteristic described. A negative restriction such as “but not including any goods connected with a post office” would give rise to legal uncertainty as to the extent of protection accorded. It could not therefore be permitted as a means of overcoming an Article 3 (1) (c) objection.

     

    Comment

    If any doubt had lingered, these judgments now make it crystal clear that the test for descriptiveness of word marks is a great deal more than “you know it when you see it.”

    Whether a word mark is descriptive is not measured by whether it describes characteristics of the goods and services claimed in the traditional sense. Rather, it depends on whether the relevant consumers might reasonably associate the word with those characteristics now or in the future. That association or anticipated association must be direct, specific, immediate and without the need for further reflection.

    It is also clear from these judgments that traditional descriptiveness and legal descriptiveness are not the same thing. Traditional descriptiveness involves a word being immediately perceived now as a descriptor. In contrast, legal descriptiveness may apply even where a word or product is totally new and has not yet been introduced in a market. Relevant consumers may not at the time of filing be in a position to put the mark into a utilitarian context. Nevertheless, if, taking into account the nature of the goods, the mark might reasonably be expected to be perceived in a utilitarian fashion in future, objection based on Article 3 (1) (c) will apply. Legal descriptiveness, the ECJ has held, looks to the future.

    The comments in POSTKANTOOR on negative restrictions to specifications are particularly important. Negative restrictions usually involve wording such as “but not including any goods or services relating to or connected with…” They have been entered on national registers for years as a means of avoiding descriptiveness objections, overcoming cited marks and settling conflicts. This judgment casts real doubt on the validity of some negative restrictions already entered, and on the extent to which they can continue now to be accepted. Where a negative restriction is accepted despite this decision, its legal effect may be uncertain. Where descriptive marks are concerned, POSTKANTOOR signals the likely end of refuge in restrictive wording.