• ALICANTE ABSTRACTS

    New Born Baby, Re-Born Principles

    In an opinion that surprised no one, the Advocate-General advised the European Court of Justice in February to reverse the Court of First Instance decision on Zapf Creation AG’s CTM application for NEW BORN BABY in respect of dolls and accessories (OHIM v. Zapf Creation AG, Case C-498/01 P).

    To the astonishment of much of the legal world, the CFI had previously found that NEW BORN BABY was not descriptive of baby dolls under Article 7 (1) (c) of the CTM Regulation. It reversed OHIM’s decision to reject the mark, accepting on appeal that NEW BORN BABY was not directly descriptive because the goods were not themselves “new born babies,” but rather dolls intended to represent them.

    The CFI’s decision signalled that a wholesale review was needed on how descriptiveness and distinctiveness were to be applied. In his written opinion, the Advocate-General injected a dose of reality into each.

     

    Descriptiveness

    The Advocate-General first considered the test for descriptiveness under Article 7 (1) (c), which provides that a mark may not be registered as a CTM if it consists exclusively of signs or indications which may serve in trade to denote characteristics of the goods or services claimed.

    Although a term that describes what a toy is intended to represent is clearly not directly descriptive of the toy itself, nevertheless it describes a characteristic of it, namely that the toy represents something. It is indeed an essential characteristic of most toys and dolls to represent something, and the Advocate-General held that it is not necessary for—or even realistic to expect—potential customers to conflate the representation with the real thing for the mark to be regarded as descriptive. Where an essential characteristic of a product is to represent something, then the word that directly describes that thing will be objectionable for the product under Article 7 (1) (c).

    Similar reasoning applied to the claim to dolls’ accessories. The CFI had found that such accessories were not intended for real new-born babies, and that the relevant public would not therefore perceive a direct and specific link between NEW BORN BABY and the accessories.

    The Advocate-General found this reasoning faulty, holding that “the intended use of an accessory for any product is by definition intimately linked to the product itself.” A term that designates a product can as easily indicate the intended purpose of an accessory. The word “shoe” was descriptive not only of footwear but also of shoe brushes, shoe trees or shoe polish. Such a sign must be available for the free use of all both for the goods directly described and for closely allied accessories. NEW BORN BABY was therefore descriptive of baby dolls and accessories within the meaning of Article 7 (1) (c).

     

    Distinctiveness

    Despite its decisive approach to descriptiveness, the CFI had left open the question of whether or not NEW BORN BABY was distinctive under Article 7 (1) (b).

    The CFI had reversed OHIM’s finding of non-distinctiveness since that finding was based on what the CFI regarded as an erroneous application of Article 7 (1) (c). The CFI held that distinctiveness under Article 7 (1) (b) had to be assessed separately from descriptiveness under Article 7 (1) (c), and that the presence or absence of imaginativeness did not determine whether a mark was distinctive.

    Whilst broadly in agreement with the CFI’s reasoning, the Advocate-General nevertheless overturned the CFI’s finding of distinctiveness under Article (7) (1) (b). As the CFI’s reversal had been based on an incorrect approach to descriptiveness under Article 7 (1) (c), it could not stand.

    Nevertheless, the Advocate-General agreed that there was unarguably an overlap between Articles 7 (1) (b) and (c), and no doubt many—if not all—marks that were descriptive would also lack distinguishing power for the same goods and services. The provisions were different, however, and must be independently assessed, rather than elided. In assessing distinctiveness, imaginativeness was not a determining factor, although its presence or absence could be taken into account. It could indeed tip the balance in a case like this, where the mark had some descriptive power.

     

    Comment

    The CFI was right to have regard to the goods when considering descriptiveness, but its decision took that principle too far. It introduced widespread uncertainty as to how descriptive marks should be assessed, and few expected it to be upheld. The Advocate-General’s opinion was warmly welcomed as a step back into reality, and the ECJ is strongly urged to follow his reasoning on Article 7 (1) (c).