POSTKANTOOR pushes BABY-DRY test one step further

In Koninklijke KPN Nederland NV v Benelux Trademarks Office, the European Court of Justice (ECJ) has clarified the test to be applied to descriptive signs. It indicated that the BABY-DRY test that a mark can be registered if there exists any perceptible difference between the descriptive terms making up the mark and terms used in everyday language will no longer suffice.

Koninklijke KPN Nederland NV (KPN), the Dutch telecommunications operator, applied to register the word postkantoor (meaning 'post office') as a Benelux mark for a wide range of products and services. The Benelux Trademarks Office refused the registration on the grounds that the mark was exclusively descriptive of the goods and services in relation to which registration was sought. KPN appealed to the District Court of Gravenhage.

The court decided to stay proceedings as it found that the answer to certain questions concerning the interpretation of the Uniform Benelux Law on Trademarks called for a referral to the Benelux Court of Justice and other questions concerning the interpretation of the Community Trademark Directive should be referred to the ECJ. The questions to the ECJ included the following:

• When assessing an application, must the Benelux Trademarks Office consider all the relevant facts and circumstances known to it, including those not included in the application (eg, the fact that the applicant already used the sign widely as a trademark for the relevant product prior to its application)?
  
  
• When assessing a sign consisting of a (new) word made up of components that are themselves descriptive of the goods or services in respect of which the application is made, does the sign as a whole, in principle, have a distinctive character?
  
  
• Is it consistent with the Community Trademark Directive for a sign to be registered for specific goods or services subject to the limitation that the registration applies only to those goods and services in so far as they do not possess a particular quality or particular qualities (eg, registration of the word postkantoor for the services of direct-mail campaigns and the issue of postage stamps provided they are not connected with a post office)?

The ECJ answered as follows:

• When assessing the distinctiveness of a sign, the national courts of the EU member states should take into account all relevant circumstances and may not assess distinctiveness abstractly. It is irrelevant that other signs are more usual to indicate certain characteristics of the goods, as is the number of competitors who may have an interest in using the sign.
  
  
• For trademarks consisting of two descriptive words, the mere combination of these words will in principle result in a descriptive and hence unregistrable sign - unless there is a perceptible difference between the word and the mere sum of its parts. This can be the case if the combination (i) is unusual and consequently creates an impression that is sufficiently far removed from the meaning of its elements, or (ii) is part of everyday language but has acquired a secondary meaning that in itself is not descriptive. In assessing whether a sign is descriptive, it is irrelevant whether there are synonyms capable of designating the same characteristics.
  
  
• The type of disclaimer mentioned (ie, notification that a registration does not extend to goods and services having a particular characteristic) is precluded as it would conflict with the principle of legal certainty.

The court also held that the guidelines of the Benelux Trademarks Office to refuse only the registration of "manifestly inadmissible" marks is contrary to the Community Trademark Directive, which provides for a thorough and full examination of a mark.

The POSTKANTOOR decision does not conflict with BABY-DRY. However, the emphasis that certain signs should remain available to competitors was missing from BABY-DRY.

Paul Reeskamp, Allen & Overy, Amsterdam