IPKAT RIDDLE: OF TRADE MARKS AND ESSENTIAL FUNCTIONS

The IPKat is puzzling once again over the deeper meaning of various provisions of European trade mark law and, once more, he is quite puzzled. Articles 3(1)(c) and 3(1)(d) of Directive 89/104 both provide absolute bars to registration. Article 3(1)(c) bars registration where the mark consists exclusively of "signs or indications which may serve a descriptive function in the course of trade, while Article 3(1)(d) bars the way to applications consisting exclusively of "signs or indications which have become customary in the current language ...".

What bemuses the IPKat is this: both Article 3(1)(c) and Article 3(1)(d) are there to stop a trade mark applicant registering as a trade mark a sign which is basically not distinctive becuse it is either needed or actually used by his competitors. But why should Article 3(1)(c) apply with regard to words etc that are not only descriptive now but may be needed because of their potential for being used in the future, while Article 3(1(d) requires that words currently used as customary and is the need to keep current descriptors free for future use while there is no similar requirement for customary terms something which can be justified by the ECJ's "essential function" doctrine? as usual, a small prize will be offered to the best anwer to this problem.

As usual the IPKat offers a small but tasty present to anyone who can provide him a good answer.