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
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
BABY-DRY STILL GOOD LAW, FOLLOWING TWO MORE ECJ DECISIONS
![BABY-DRY STILL GOOD LAW, FOLLOWING TWO MORE ECJ DECISIONS]()
Reviewed by Jeremy
on
Friday, February 13, 2004
Rating:
Follow the IPKat on LinkedIn 
![[Guest post] Thou shalt not discriminate the Lego block over any other kind of product – GRUR speaks out on C-211/24](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgWJYQUJNvYydrZcjwSHPuxd14xX3_48aBusHKBogY-Wg1BPSJSABbFFjmGiUV3aqG2npP9xYaIl1vtWK5AsqGOQPgRD2TWFLhyyc4xGm1fHDD-tt9kHcrSSgAyju2P9wSKz0VW6h7D5MD4Hxd9vREyxKYzlMRNXxxtxc3DiNsXppfVaxgSxAMV/s72-c/21742619125_7c9e53cd39_o.png)
![[Guest post] Comparison of wine and gin: the EUIPO’s unquestionable Similarity Tool](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiNfTEBXiPVS0XjZi4mNE1OtXLxXiEp1PUgcUK7MMMXlfyTkO5SMXv-VCMXXNdS_F1XdMMxYca1VbBTGvvDeTVpo5x-5YwR7atQJmK3x32T8LACpf4308kht3nEtaxPwEPcGGrB0s5xjGktmQPOiVwPVLRO5JbW19qupc7xUtiVutvaWHow0OpBkA/s72-c/Picture%201.jpg)
![[Guest post] Muddying the waters of copyright – a rapid reaction to today’s IPEC decision which sees the sinking of the WaterRower’s claims for copyright protection](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh7chFANC7ppmZl4_nlR6_hZEcg6cOhVEJNVXqki4p82BoVlcLFotuOXzHWYD5lKLiiK_kRoWeXmJjjaV2DpoKsAWq8U3LFioO5W_841a9gcfDIFjvZWcGqfnr0jWJNtyXptIYR_8bxCssaDkJ9KMokuSqy1g65Il7p2hPwo4MfRCEGoUPQJesvbg/s72-w400-c-h189/Screenshot%202024-11-11%20at%2018.20.45.png)
Posts
No comments:
All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.
It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.
Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html