Absolute Grounds Descriptive Terms

Front 1

What are the cases for this absolute ground?

Back 1

Windsurfing Chiemsee

Baby dry

Double mint
Postkantoor
Zapf creation

Front 2

what is the policy reasoning for this absolute ground?

Back 2

b/c they do not indicate origin

Front 3

is descriptive terms bar so that descriptive terms can not not be monopolised,

what case says this

Back 3

no

in this system the exclusive rights of a t/mowner are fluid and subject to significant limits and qualifications, thereby presentingless danger of an unfair monopoly

there is less need to rely on strict regulation to restrict words andsigns which can be used as t/ms in orderto keep descriptive words and signs free for all traders – instead othertraders are guaranteed the right to make normal use of such words and othersigns

babydry - AG JACOB

-

Front 4

what is the examples AG JACOBS gave in Baby Dry for the restrictions on descriptive terms

Back 4

just as the owner of the VITTEL trade mark cannot prohibit another producer from stating in good faith that its water is bottled at Vittel, nor could Procter & Gamble prevent a rival from claiming that its diapers “keep your baby dry”.

Front 5

what was the key issue in baby dry

Back 5

key issue in baby-dry was whether the fact that a proposed mark consisting only of descriptiveterms in the proposed mark would negate its distinctive character.

Front 6

what was the key question in baby dry

Back 6

the case turned on whether therelevant consumers would be likely to perceive the word combination as merelydescribing the intended function of the relevant products or whether they wouldnevertheless be likely to perceive it as a trade mark, albeit one havingdescriptive significance as well

Front 7

what is the test in baby dry

Back 7

is there any perceptible difference between,

the particular combination and configuration in a proposed mark

and

expressions in normal language which consumers would perceive as designating the relevant goods or their essential characteristics or their intended purpose would be enough to overcome the descriptive terms bar

Front 8

why did the ECJ allow registration in baby-dry

Back 8

the word combination “baby-dry” in relation todiapers is in fact a “syntactically unusual juxtaposition” of descriptivewords.49 Thiscombination, considered in the round, is not a familiarexpression in the English language either for designating babies' nappies orfor describing their essential characteristics.

Front 9

according to baby dry is it relevent that each individual word is descriptive?

Back 9

no.
THE FACT THAT A PROPOSED MARK CONSISTS EXCLUSIVELY OFDESCRIPTIVE TERMS will not bar registration
THE COMBINATION OF WORDS MUST BE CONSIDERED AS AWHOLE!

Front 10

how did babydry reconcile with the earlier judgement of windsurfing chiemsee

Back 10

court said Windsurfing should be viewed as

reflectingthe peculiarities of place names and the special status accorded to them in anumber of legal contexts he said that theapproach in windsurfing “ must be viewed in the context of that particularcase, which concerned the use not of descriptive language but of a geographicalname.

Front 11

what was the retreat from baby-dry in double-mint

Back 11

in baby-drythe court held that the mark was only offending if the description was anormalway of describing the relavent matter

– in doublemint the ecj set the test HIGHER

if the word at issue was capable of being usedby other economic oporators to designate a characteristic of their goods andservices then it should not be registered

AND if at least one of (the)possible meanings (of such sign or indication is to) designate a characteristicof the goods or services concerned

Front 12

Postkantoor - what was the descriptive term

Back 12

postkantoor for paper and other services(meaning post-office in dutch)

Front 13

what was the higher bar set in POSTKANTOOR

Back 13

> did not matterwhether the characteristics which the mark described were essentialcharacteristics of the goods – the public interests in the descriptive termbar means that signs which describe anycharacteristic should be kept available

Front 14

WHICH CASE WAS DECIDED ONE WEEK AFTER POSTKANTOOR AND CHOSE TO IGNORE ITS JUDGEMENT

Back 14

Zapf Creation v OHIM (new born baby) - delivered one week afterpostkantoor, AG Jacobs preffered to ask whether the mark described the “essential characterisitics” of the goods.

Front 15

summarise the different approaches to the question of descriptive terms

Back 15

Baby dry - applicant leniant approach
are there any perceptible differences between proposed mark, and expressions/words in common language which would be used to describe the goods or there characteristics

Doublemint - is the word capable of being used by othereconomic oporators to designate a characteristic of their goods and

services

Postkantoor - signs which describeany characteristic should be kept available

Zapf Creation - does the mark describe the “essentialcharacterisitics” of the goods.