The judgments of the European Court of Justice provide guidance on interpretation of the law. The Court’s recent decision on the mark ‘BABY-DRY’ lowers the threshold of registrability. Today, even a mark which “unquestionably alludes to the function which the goods fulfil (para 43)” can be registered.
Interpretation of Section 3(1)(c)
Section 3(1)(c) of the Act has traditionally been viewed in the UK as a bar to a wide variety of marks which describe characteristics of the products they are applied to. Now only marks which “because they are no different from the usual way of designating the relevant goods or services or their characteristics, [and are unable to] fulfil the function of identifying the undertakings (para 37)” are barred from registration by Section 3(1)(c). In addition, “any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark (Para 40).”
The Need to Keep Free
In the UK, a distinction had been sought between potentially descriptive marks which should be free for all to use and ‘merely’ non-distinctive marks which may be monopolised on a first come first served basis. The ‘BABY-DRY’ judgment affirms that this distinction is artificial. If a mark is not directly descriptive it should not be hindered on absolute grounds because other sections of the Act protect the needs of other traders to use descriptions.
The judgment does not necessarily mean that an descriptive sign can be now registered ‘because of the saving provisions’. It confirms that any sign that will in fact appeal to the average consumer as a trade mark, identifying the goods or services of one undertaking, is not prevented from registration by the ‘need to keep free’ for descriptive use. This distinction is significant, and may alter the Registry’s practice in respect of a variety of area.
“The Newsletter of the Trade Marks Registry” January 2002