Neologism comprising descriptive elements is not registrable

In Campina Melkunie BV v Benelux Trademark Office, the European Court of Justice (ECJ) has ruled that a trademark consisting of a neologism composed of elements that are themselves descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of those characteristics pursuant to Article 3(1)(c) of the Community Trademark Directive, unless there is a perceptible difference between the neologism and the mere sum of its parts.

Campina BV, a Dutch manufacturer of dairy products, sought to register BIOMILD as a Benelux word mark for various dairy products and non-alcoholic drinks. The Benelux Trademark Office (BTO) refused the application. It found that the mark was descriptive of characteristics of the goods concerned, since it is composed exclusively of elements that are themselves descriptive of those characteristics. The Court of Appeal of The Hague confirmed the BTO's decision. Campina appealed on a point of law to the Dutch Supreme Court, which referred various questions to the Benelux Court of Justice (BCJ) for a preliminary ruling.

In turn, the BCJ referred some of the questions to the ECJ, asking whether Article 3(1)(c) of the Community Trademark Directive must be interpreted as meaning that a mark consisting of a neologism composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, may be regarded as not itself descriptive of the characteristics of those goods or services and, if so, in what circumstances.

The ECJ stated that, as a rule, the mere combination of elements that are themselves descriptive of characteristics of the goods or services concerned remains descriptive of those characteristics, even if the combination creates a neologism.

Further, the ECJ ruled that word marks can pass the test of Article 3(1)(c) if the combination of word elements creates, because of its unusual nature, an impression that is sufficiently far removed, both aurally and visually, from that produced by the mere combination of those elements. In other words, there must be a perceptible difference between the neologism and the mere sum of it parts.

The ECJ concluded that when examining the grounds for refusal in Article 3(1)(c), it is irrelevant whether there are synonyms capable of designating the same characteristics of the goods or services referred to in the application for registration.

The decision is in line with the DOUBLEMINT decision, in which the ECJ ruled that when a word has at least one possible meaning that designates a characteristic of the goods or services for which registration is sought, then it should be refused registration, unless there is evidence that the mark has acquired distinctiveness through actual use (see ECJ reverses DOUBLEMINT decision).

The BIOMILD decision constitutes a balanced but nevertheless rather severe guideline for trademark offices and courts having to determine the distinctive character of trademarks composed of descriptive elements. It is to be expected that they will be somewhat more reluctant to grant trademark protection to such signs than under the more liberal BABY-DRY regime.

Michel Draps, Altius, Brussels