Before the Appointed Person

AD2000TradeMark

Before the Appointed Person

3 September 1996

[1997]R.P.C.168

Mr. Geoffrey Hobbs Q.C.

3 September 1996

Trade mark –Application for registration –Appeal against refusal by registrar –Whether mark devoid of any distinctive character –Whether sign which satisfies requirements ofTrade Marks Act 1994section 1(1)free from objection undersection 3(1)(b)–Construction ofsections 1(1) and 3(1)–Whether acceptance of other marks to be taken into account –Whether protection afforded by section 11 to be taken into account –Costs –Appeal dismissed.

•Trade Marks Act 1994, sections 1(1), 3(1), 11(2)(b).

• Council Directive No. 89/104/EEC, articles 2, 3(1)(a), (b), (c), (d), 3(3), 6(1)(b).

• Council Regulation (EC) No. 40/94 article 7(1)(a).

• Paris Convention, article 6 quinquies, para. B2.

The registrar had held the mark AD2000,primafacie, devoid of any distinctive character and had refused registration undersection 3(1)(b) of the Trade Marks Act 1994. On appeal, the applicants argued that having accepted that the mark was a sign “ capable of distinguishing goods”for the purpose ofsection 1(1), the registrar was precluded (in the absence of any objections under 3(1)(c) and (d) from finding that it was “ devoid of any distinctive character under section 3(1)(b); that the mark possessed sufficient distinctive character for registration and was, at least, equal to other marks accepted for registration; in the event of registration,section 11provided adequate protection for other traders.

Held, , dismissing the appeal:

(1) In order to be registrable a sign had to possess the qualities of a trade mark identified in section 1(1) and none of the defects identified insection 3. The requirements of section 1(1) were satisfied even when a sign (capable of representation graphically) was only “ capable”to the limited extent of not being “ incapable”of distinguishing goods or services of one undertaking from all others.*169

(2)Section 3(1)(a)prevented the registration of signs which did not satisfy section 1(1) and thus could not constitute a trade mark. Signs which were not objectionable under section 3(1)(a) might nevertheless be objectionable undersections 3(1)(b), (c) and (d).

(3) The proviso tosection 3(1)indicated that the essence of the objection under sections 3(1)(b), and (c) and (d), was immaturity; that is signs which were “ not incapable”of distinguishing goods or services but were not distinctive by nature and had not become distinctive by nurture.

(4)Section 3(1)(b)prohibited registration of signs which met the requirements ofsection 1(1)but which nonetheless were devoid of any distinctive character at the time of application. Signs which were not objectionable under section 3(1)(b) would not be objectionable under sections 3(1)(a), (c) and (d) but might be objectionable under other provisions of section 3.

(5)Section 3(1)(c)was comparable tosection 11(2)(b)and denied protection to signs which satisfied section 1(1) but served only to designate characteristics, other than origin, which could be used by other traders. Signs which were not objectionable under section 3(1)(c) might be objectionable under other provisions of section 3 since section 3(1)(c) was not exhaustive of those provisions.

(6)Section 3(1)(d)prohibited the registration of signs which satisfied section 1(1) but which consisted exclusively of signs or indications common to the trade or customary in the common language. Signs which were not objectionable under section 3(1)(d) might be objectionable under other provisions of section 3.

(7) For the purposes ofsection 3(1)a sign possessed a distinctive character if and when it was endowed by nature or nurture with the capacity to communicate the fact that the goods or services with which it was used recurrently were those of one undertaking only.

(8) For a sign to be distinctive of one person's goods or services it had to be incapable, generally speaking, of fair and honest application to the goods or services of anyone else.

(9) A sign did not possess enough distinctive character if people exposed to it were not generally likely to regard it as an indication of provenance.

(10) Although section 11 was designed to protect honest traders, the first line of protection was to refuse registration of signs which were excluded from registration by section 3.

(11) A combination of two letters and a four-figure numeral might possess a distinctive character if it was an idiosyncratic combination but AD2000 naturally referred to the year 2000 and was not idiosyncratic.

(12) Various promotional messages could be conveyed by reference to AD2000 and it could not rightly be said, at the time of application, to be incapable of fair and honest use by anyone else.*170

(13) Every application had to be judged on its own merits and not by reference to other marks which had been judged registrable on other occasions.

(1) The burden of authority was against the use of Minutes of Council Meetings as to the construction of Directives.

(2) It was generally desirable that the practice of not awarding costs, which applied under the old Act, should continue.

On 31 October 1994 Allied Domecq Plc (“ the applicant” ) applied under theTrade Marks Act 1994(“ the Act” ) to register AD2000 for use in relation to all goods in Classes 29, 30, 32 and 33. The application was refused by the registrar undersection 3(1)(b)of the Act on the ground that the designation was a trade mark devoid of any distinctive character.

Distinctivecharacter

The expression “distinctivecharacter”is not defined in the Act or the Directive. However, the requirements of the expression as used in section 3(1) of the Act are not difficult to discern. For the purposes of that section a sign possesses a distinctive character if and when it is endowed by nature and/or nurture with the capacity to communicate the fact that the goods or services with reference to which it is used recurrently are those of one and the same undertaking. This is borne out by the judgments of the European Court of Justice in the repackaging cases referred to above in which it was reiterated that:

“ Trade mark rights … constitute an essential element in the system of undistorted competition which the Treaty is intended to establish. In such a system, undertakings must be able to attract and retain customers by the quality of their products or services, which is possible only thanks to the existence of distinctive signs allowing them to be identified. For the trade mark to be able to fulfil that function, it must constitute a guarantee that all products which bear it have been manufactured under the control of a single undertaking to which responsibility for their quality may be attributed (see HAG II, paragraph 13, and IHT International Heiztechnik, paragraphs 37 and 45).”

Two points identified byJacob J. in British Sugar Plc v. James Robertson & Sons Ltd.(supra) should be borne in mind in this connection. First (page 302) that for a sign to be distinctive of a person's goods or services in the required manner it must generally speaking be incapable of application (meaning fair and*176honest application) to the goods or services of anyone else: see further The Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd. (1938) 55 R.P.C. 125, 145 lines 42 to 46 per Lord Russell. Second (page 306) that a sign does not possess enough of a distinctive character for the purposes of section 3(1) if people exposed to the use of it are not generally likely to regard it as something which provides an indication as to the provenance of the goods or services with reference to which it is used.

Although section 11 of the Act contains various provisions designed to protect the legitimate interests of honest traders, the first line of protection is to refuse registration of signs which are excluded from registration by the provisions of section 3. In this regard, I consider that the approach to be adopted with regard to registrability under the 1994 Act is the same as the approach adopted under the old Act. This was summarised by Robin Jacob Esq. Q.C. in his decision on behalf of the Secretary of State inColorcoat Trade Mark [1990] R.P.C. 511 at 517in the following terms:

“ That possible defences (and in particular that the use is merely abonafidedescription) should not be taken into account when considering registration is very well settled, see e.g. Yorkshire Copper Work Ltd.'s Trade Mark Application (1954) R.P.C. 150 at 154 lines 20– 25 per Viscount Simonds L.C. Essentially the reason is that the privilege of a monopoly should not be conferred where it might require “ honest men to look for a defence” .

For the reasons indicated above, I am unable to accept that an objection to the registration of a sign undersection 3(1)(b)of the Act as beingatrademarkdevoidofanydistinctivecharactermust fail in the absence of objections undersections 3(1)(a), 3(1)(c), and 3(1)(d)of the Act. It was open to the registrar to object to the registration of the designation AD2000 under section 3(1)(b) alone. The question is whether the objection is well-founded and the answer to that question depends upon whether at the date of the application that designation had the capacity to communicate the fact that the various goods in classes 29, 30, 32 and 33 with reference to which it would be used recurrently by the applicant were those of one and the same undertaking.

Without any prior use on the part of the applicant, the capacity to communicate that fact must, if it existed, have existed by virtue of the nature and characteristics of the designationperse. A combination of two letters and a four-figure numeral may well possess a distinctive character if it is an idiosyncratic combination. However, the combination represented by the letters and numeral AD2000 is not an idiosyncratic combination. It naturally refers to the year 2000 and that, in my view, is what most people will think of when they see or hear it used in connection with the marketing of goods of the kind for which registration has been sought.

Of all the years in the calendar, the year 2000 is one which stands out as having special significance as a result of the sense of momentousness it arouses by being the year which ushers in a new millennium. Various promotional messages can accordingly be conveyed with a commensurate degree of impact by referring to the year AD2000 in connection with the marketing of goods and services: 'forward looking'; 'progressive'; `in advance of its time'; 'at the leading edge'; 'good for the future'; 'better than before'; 'the best so far'; 'a fresh start'; 'a new beginning'; 'a turning point'; 'setting new standards for a new*177era'; 'for the celebration or commemoration of a once-in-a-lifetime event'; and so on. I note from the hearing officer's decision and grounds of decision in the present case that the registrar receives a very large number of applications for registration of trade marks incorporating the number 2000 for all kinds of goods. This reinforces me in the view I have formed that AD2000 cannot rightly be said to be incapable of fair and honest application to the goods of anyone other than the applicant and that it is a designation which did not at the date of the application have the capacity to communicate the fact that the various goods in classes 29, 30, 32 and 33 with reference to which it would be used recurrently by the applicant were those of one and the same undertaking. In my view, that is a capacity it would only have possessed at the date of the application if it had been used in a manner and to an extent sufficient to have endowed it with a distinctive character. I consider that AD2000 is a trade mark devoid (by which I mean unpossessed) of any distinctive character. In agreement with the hearing officer I therefore conclude that it is excluded from registration bysection 3(1)(b)of the Act.

I am not persuaded otherwise by the existence of registrations in the proprietorship of the Applicant for: MILLENIUM (No. 1166092) registered in Class 32 as of 8 December 1981 for the use in relation to beer, ale, stout, porter and lager; and MILLENNIUM (No. 1324-754) registered as of 22 October 1987 for use in relation to alcoholic beverages included in Class 33; or by the existence of applications advertised but yet to be registered for: MILLENIUM (No. 2048400) proceeding in the name of the applicant because of prior rights in Registration No. 1324754 for use in relation to wines, spirits and liqueurs all included in Class 33 with an application date of 12 December 1995; and BAR 2000 (No. 2048071) proceeding in Class 42 in the name of Scottish & Newcastle plc for use in relation to restaurant, cafe, bar, public house, catering, hotel, accommodation and nightclub services with an application date of 9 December 1995. Every application for registration must be judged on its own merits and I am not willing to conclude that AD2000 should be judged registrable for all goods in Classes 29, 30, 32 and 33 as of 31 October 1994 because MILLENIUM, MILLENNIUM and BAR 2000 have been judged registrable on other occasions. The state of the register is, in principle, irrelevant to the fate of the application which is before me in the present case. This principle was recently re-affirmed byJacob J. in British Sugar plc v. James Robertson & Sons Ltd. (supra) at page305in the following terms:

“ Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, seee.g.MADAME Trade Mark [1966] R.P.C. 541and the same must be true under the 1994 Act. I disregard the state of the register evidence.”

*178

In the result, the appeal fails. It was indicated at the hearing before me that the applicant and the registrar would be content if I made no order for costs in connection with the appeal. I think it is generally desirable to continue with the practice which applied in relation to appeals to the “ Board of Trade”againstexparterefusals of registration under the old Act. I therefore determine that the appeal be dismissed with no order as to costs.

ProcterGambleCompanyvOfficeforHarmonisationIntheInternalMarket(TradeMarksandDesigns)

(Case C-383/99 P)

Court of Justice of the European Communities

20 September 2001

[2002]E.T.M.R.3

HEADNOTE

H4 P&G applied to register the words BABY-DRY as a Community trade mark for “ disposable diapers made out of paper or cellulose”and “ diapers made out of textile”in Classes 16 and 25. The application was refused on the ground that BABY-DRY was descriptive, being composed “ only of a simple combination of the non-distinctive words baby and dry, thus consisting exclusively of an indication which may serve in trade to designate the intended purpose of goods such as those for which registration is sought,i.e.keeping a baby dry” .

H5 P&G appealed and argued, among other things, that the combination BABY-DRY was sufficiently distinctive to qualify for registration. The Board of Appeal dismissed that appeal, concluding that no undertaking may be given an exclusive right to use a sign which does no more than describe, in ordinary language, the nature, quality or intended purpose of the goods for which it is to be used; since BABY-DRY was a combination of two ordinary words which immediately informed consumers that the product was suitable for keeping babies dry, the term consisted exclusively of signs or indications which served to designate the intended purpose of the goods; the sign was also devoid of any distinctive character, being incapable of distinguishing diapers produced by one undertaking from those of others who might also wish to emphasise the effectiveness of their products in keeping babies dry.

H6 P&G appealed against the Board's decision to the Court of First Instance. That Court annulled the Board's decision on the ground that the Board should have considered the evidence of acquired distinctiveness, but dismissed it on the question of whether the words BABY-DRY were descriptive or lacking in distinctive character. In its decision the Court examined only whether BABY-DRY consisted “ exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”under Article 7(1)(c) of Regulation 40/94, pointing out that it was sufficient for one of the absolute grounds for refusal to apply for the sign to be ineligible for registration. It considered that the Regulation intended that signs or indications of the kind described in that subparagraph “ should, by their very nature, be regarded as incapable of distinguishing the goods of one undertaking from those of another” . In a further appeal, P&G asked the Court of Justice to set aside the judgment insofar as the Court of First Instance held that BABY-DRY mark was not registrable on account of Article 7(1)(c) of Regulation 40/94.

H7 In his Opinion the Advocate General advised that the Court of Justice*24should set aside the decision of the Court of First Instance, alter the decision of the Board of Appeal and annul the decision of the examiner that the BABY-DRY mark consisted exclusively of indications which may serve in trade to designate the intended purpose of babies' diaper and to remit the case for further examination. He considered that Article 7(1)(c) could be taken to preclude registration of any proposed trade mark which consistedexclusivelyof signs or indications designating characteristics of the goods or services and that it may be better to regard Article 7(1)(c) as being intended not to prevent the monopolisation of ordinary descriptive terms but to avoid registering descriptive brand names, for which no protection was available. He doubted whether any reasonably aware person who has not yet encountered the brand name BABY-DRY would think unhesitatingly of diapers when first confronted with it or that, when hearing it used in connection with such goods, would he regard it as a designation of their intended purpose: although one of the principal functions of diapers was to keep babies dry (in one sense of that expression), the term BABY-DRY was not used in ordinary language to refer to such items or their intended purpose, nor was it suggested that it was.

H8 Held, by the European Court of Justice, that P&G's appeal should be allowed and the decisions of the examiner and the Board of Appeal annulled.

H9 1. To assess whether a word combination such as BABY-DRY was capable of distinctiveness, it was necessary to put oneself in the shoes of an English-speaking consumer. From that point of view, given that the goods concerned were babies' nappies, the determination to be made depended on whether the word combination in question might be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance.