The European Court of Justice has delivered a perhaps surprising judgment on registrability of ostensibly descriptive marks.
Who: Procter & Gamble Company v Office for Harmonisation in the Internal Market (Trade Marks & Designs) (OHIM)
When: September 2001
Procter & Gamble appealed against the Community Trade Mark Office’s refusal to register “Baby Dry” as a Community Trade Mark. The Office’s refusal had been on the grounds that the mark consisted purely of words which described the purpose of the products and was too descriptive. This meant that for P&G to be granted a registration would unfairly prevent other traders from using such words in marketing material.
The European Court of Justice considered the arguments, but was not convinced that other traders would legitimately want to make descriptive use of the words “baby dry.” Each of the two words was undoubtedly descriptive but their “syntactically unusual juxtaposition” was not, the Court found, a familiar expression in the English language. “Baby’s Dry” may for example have created greater problems as it was clearly a common expression. “Baby dry” on the other hand was not likely to trip easily from the tongue. It was more a “lexical invention” bestowing distinctive power on the phrase, so the appeal was allowed, with the mark allowed to proceed to registration.
Why this matters:
This case makes quite clear that although a brand may seem on its face descriptive and not registrable, relatively small deviations between the words submitted for registration and common parlance may be enough to remove any objection.