Journal Article


Edward Smith

in Journal of Intellectual Property Law & Practice

Volume 2, issue 12, pages 805-807
Published in print December 2007 | ISSN: 1747-1532
Published online September 2007 | e-ISSN: 1747-1540 | DOI:

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Legal context

This article considers Article 7(1)(c) of Council Regulation (EC) No. 40/94 of 20 December 1993 and Section 3(1)(c) of the Trade Marks Act 1994. Both equivalent provisions cover absolute grounds objections to trade mark registration based upon descriptiveness.

Key points

This article highlights three recent cases, which have been referred both to the European Court of Justice and to the Court of First Instance on appeal from decisions of the Office for Harmonization in the Internal Market Trade Marks and Designs (OHIM). Using the three examples, the author sets out the practical steps, which would be undertaken in the UK-IPO to assess whether an application for registration is descriptive of a characteristic of the goods or services for which application is sought. The author then sets out various propositions of law which must also be applied in relation to a descriptiveness objection. In particular, the author considers guidance in relation to neologisms comprising two or more descriptive terms. The author believes that the displacement of practical assessment by rigid rule-based legal proposition is undesirable. Within a partially harmonized system, the author argues for more weight to be given to registration within the country of ‘linguistic origin’, and for authorities to pay more heed to internet-based evidence.

Practical significance

The author explains the process of examination that would be undertaken in the UK-IPO and the reference material which would, in particular, be used in that assessment.

Keywords: Even before the European Court of Justice ruling in BABY-DRY and a great deal more following that decision, trade mark authorities and the courts have struggled to address with clarity a range of legal and policy issues surrounding the phenomenon of the trade mark application that has a high descriptive content and a very small inherently distinctive character.; These issues have been crystallized in three recent rulings of the Court of First Instance of the European Communities on the registrability of the words ROCKBASS, LOKTHREAD, and EUROPIG, each of which has attracted measures of both praise and criticism.; In this article the author, who works in the UK Trade Mark Registry, gives an examiner's perspective concerning the formulation of an appropriate test for the registrability of such marks and its meaningful application to the facts of specific trade mark applications.

Journal Article.  1790 words. 

Subjects: Arbitration ; Intellectual Property Law

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