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Friday, 13 February 2004


The European Court of Justice delivered two major judgments yesterday on the clarification of the registrability of descriptive signs as trade marks in harmonised EU jurisdictions. Both cases came from the Netherlands: Case C-265/00 Campina Melkunie (BIOMILD for various milk products) and Case C-363/99 Koninklijke KPN Nederland (POSTKANTOOR, the Dutch term for Post Office, for goods and services in various classes). Tobias Cohen Jehoramand Koen Limperg, both of Dutch law firm De Brauw Blackstone Westbroek, acted for KPN in the POSTKANTOOR case. Their firm’s website produced an instant comment on the two ECJ decisions, on which much of this blog is based.

The basic ECJ rule on registration of combinations of descriptive terms as trade marks is found in Case 383/99 BABY-DRY: “any perceptible difference” between descriptive terms as normally used and as they appeared in the trade mark application was sufficient to satisfy the criterion of distinctiveness, even if it was only a syntactically unusual juxtaposition (like BABY-DRY instead of “dry baby”). In the face of criticisms of this decision both within the trade mark professions and by Advocate General Ruiz-Jarabo Colomer, the ECJ restated in Case C191/01 DOUBLEMINT that the BABY-DRY principle is good law and has now, in yesterday’s cases, clarified its application further. The two cases now state as follows:

• a simple combination of descriptive elements remains descriptive and unregistrable unless it acquires a secondary meaning;
• a combination of those same elements becomes registrable when it contains any unusual variation;
• the Benelux practice of requiring the trade mark proprietor to make a disclaimer that the goods for which a mark is granted will not possess a particular characteristic “leads to legal uncertainty”;
• signs that may designate characteristics of goods or services should remain freely available for all.

These principles are not in any sense “new” law. The IPKat awaits with excitement the decisions of the Dutch courts as to whether BIOMILD and POSTKANTOOR will be registrable or not.

Click here for more “bio” products: Biopot yoghurt, Bio cheese, Bio milk, Bio butter, Bio Cream

Click here for more post-related intellectual property: Postman Pat, the Singing Postman, The Night Mail, The Pony Express and the Penny Magenta stamp from British Guyana

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