Keywords
Summary

Keywords

1. Appeal - Admissibility - Where a party partially fails in its application

(EC Statute of the Court of Justice, Art. 49)

2. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks which consist exclusively of signs or indications which may serve to designate the characteristics of a product - Criteria

(Council Regulation No 40/94, Arts 7(1)(b) and (c) and 12)

3. Community trade mark - Definition and acquisition of the Community trade mark - Absolute grounds for refusal - Marks which consist exclusively of signs or indications which may serve to designate the characteristics of a product - BABY-DRY

(Council Regulation No 40/94, Art. 7(1)(c))

Summary

1. Where the annulment by the Court of First Instance of the act submitted to it for judicial review is only partial, and notwithstanding the fact that the operative part of the judgment does not expressly restate that limitation, the judgment in question gives the appellant only partial satisfaction. Since the appellant has therefore partially failed in its application, it has an interest in appealing against that judgment. The appeal, which seeks annulment of that aspect of the contested judgment, must therefore be declared admissible.

( see paras 22, 25-27 )

2. It is clear from Article 7(1)(b) and (c) of Regulation No 40/94 on the Community trade mark, taken in conjunction with Article 12, that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function.

The signs and indications referred to in Article 7(1)(c) of that regulation are thus only those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics.

As regards trade marks composed of words, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. 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.

( see paras 37, 39-40 )

3. As regards the registration of Baby-Dry as a Community trade mark for disposable diapers made out of paper or cellulose and diapers made out of textile, this word combination cannot be regarded as exhibiting, as a whole, descriptive character; it is a lexical invention bestowing distinctive power on the mark so formed and may not be refused registration under Article 7(1)(c) of Regulation No 40/94.

Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics.

( see paras 43-44 )