NEW BORN BABY ruling abandoned

The European Court of Justice (ECJ) has been thwarted in its attempt to issue a ruling in the NEW BORN BABY Case following the withdrawal of an application to register NEW BORN BABY as a Community trademark. The withdrawal means that the ECJ will not have the chance to examine the legitimacy of the Court of First Instance's (CFI) reasoning in the case, which suggested that the mark was not descriptive.

Zapf Creation AG applied to the Office for Harmonization in the Internal Market (OHIM) to register NEW BORN BABY as a Community trademark for "dolls to play with and accessories for such dolls in the form of playthings" in Class 28 of the Nice Classification.

An examiner at the OHIM refused the application on the grounds that NEW BORN BABY was descriptive of the goods in question and devoid of any distinctive character. The OHIM's Third Board of Appeal held that the examiner had properly applied Article 7(1)(b) and (c) of the Community Trademark Regulation. It found that the phrase 'New Born Baby' had a clear meaning in English and that the relevant sector of the public would instantly understand that the dolls were supposed to represent new born babies. Zapf appealed.

The CFI upheld the appeal and annulled the board's decision. It found that the phrase 'New Born Baby' did not designate the quality, intended purpose or any other characteristics of dolls or accessories for dolls. In any event, said the CFI, a sign descriptive of what a product represents cannot be considered descriptive of the product itself unless, in their purchasing decision, the target consumers conflate the product and what it represents. In the CFI's view, the board and the examiner had failed to demonstrate the existence of such conflation in the case at hand. Moreover, the doll accessories neither represented nor were intended for new born babies, nor did there appear to be any direct or specific link between the mark and the accessories.

The CFI also noted that the board had concluded that the sign was not distinctive because it was descriptive and comprised no fanciful elements. According to the CFI, the board's finding was incorrect as it was clear from case law that lack of distinctiveness does not arise merely because a sign is unimaginative.

On appeal by the OHIM, Advocate General Jacobs considered the reasoning of the CFI to be clearly wrong in law. Jacobs stated that it is true that a term that is descriptive of what a toy represents is not directly descriptive of the toy itself. However, Article 7(1)(c) of the regulation precludes registration of:

"trademarks which consist 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."

Thus, Article 7(1)(c) is applicable even without evidence that potential consumers will, on the basis of the sign, conflate the product with what it represents. Jacobs opined that where an essential characteristic of a product is to represent another thing (in this case dolls designed to represent new born babies), a term consisting exclusively of elements that designate that thing may not be registered as a trademark.

Jacobs concluded that the ECJ should set aside the judgment of the CFI and dismiss the application.

The case, however, ended before the ECJ could give judgment because Zapf withdrew its application.

Reinhard Schanda and Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna