Trademarks

• Author: International Law Group

In April 1996, Procter & Gamble (P&G), a corporation with its headquarters in Cincinnati, Ohio, applied to the Office for Harmonisation in the Internal Market (OHIM) to register "BABY-DRY" as a European Community trademark. It would cover disposable diapers made of paper or cellulose as well as diapers made out of textile. The OHIM's examiner rejected the application in January 1998.

The First Board of Appeal next dismissed P&G's appeal. It ruled that BABY-DRY merely designated the intended purpose of the goods and lacked distinctive character, thus making it ineligible for registration under Article 7(1)(b) and (c) of Regulation No. 40/94 (the Regulation). The Board, however, declined to consider P & G's contention that, under Article 7(3) of the Regulation, the trade mark had acquired distinctiveness following its use because P&G had not raised this point before the examiner.

P&G then took the matter to the Court of First Instance (CFI). That Court held that a mark using words referring to the intended purpose of the goods is "intrinsically incapable of distinguishing the goods of one undertaking from those of another, even if the ground for refusal obtains only in part of the Community." That is, that the term BABY-DRY merely informs the consumer that its function is to keep babies dry but without a distinguishing term.

On the other hand, the Court concluded that the Board had erred by failing to consider applicant's offer to show that BABY-DRY had acquired a distinctive character through use under Article 7(3) of the Regulation merely because applicant had not made this point to the examiner. The CFI therefore annulled the contested decision.

In the view of the ECJ, the Regulation does require a distinctive character under Article 7 but does not give the trade mark owner a monopoly over the honest use of the component terms as Article 12 points out. "It is clear from those two provisions taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is, as both Procter & Gamble and the OHIM acknowledge, 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." [para. 37]

Moreover, a tribunal...