Two different outcomes in cases involving descriptive word combinations

In Organisation Benelux de la Propriété Intellectuelle v Blueplanet LLC (C 08.0541.F/1, October 21 2010) and Organisation Benelux de la Propriété Intellectuelle v Pierre Fabre Dermo Cosmétique (C 09.0294.F/1, October 21 2010), the Court of Cassation has ruled on two appeals on a point of law by the Benelux Office for Intellectual Property (BOIP) against judgments of the Brussels Court of Appeal.

Both cases concerned a trademark application that the BOIP had initially refused on absolute grounds. On appeal, both applicants had persuaded the Brussels Court of Appeal to allow the registration of the marks. Pursuant to appeals by the BOIP, the Court of Cassation remitted one of the cases to the Brussels Court of Appeal for reconsideration, but upheld the other decision. Both matters pertained to word marks consisting of a combination of two seemingly descriptive components.

Trademark law in Belgium is governed by the Benelux Intellectual Property Convention, a treaty between Belgium, the Netherlands and Luxembourg which provides for a uniform set of rules on trademark and design rights throughout the Benelux region. Trademark applications and oppositions in the three countries are handled by the BOIP. Appeals against BOIP decisions can be brought before the courts of appeal in The Hague, Luxembourg or Brussels, according to the provisions on jurisdiction in the convention. Articles 2.11(1) and (2) of the convention set out the absolute grounds for refusal of a Benelux trademark application (these provisions have been brought in line with the EU Trademarks Directive (2008/95/EC)).

In Organisation Benelux de la Propriété Intellectuelle v Blueplanet, the Brussels Court of Appeal held that the sign AQUACLEAN could not be considered to be descriptive or non-distinctive for "compositions, in liquid or dry-powder form, for the biodegradation of organic waste". In particular, the court found that consumers would not perceive the mark as directly and immediately referring to the quality or intended purpose of the goods, owing to:
  • its unusual composition, combining a Latin and an English word;
  • its unusual syntax (in Dutch, an adjective - such as 'proper' ('clean') - usually precedes the noun that it modifies); and
  • the lack of a space between the words.
The Court of Cassation relied on EU case law - specifically, the decisions in Koninklijke KPN Nederland (C-363/99) and Campina Melkunie (C-265/00) - in finding that such considerations do not suffice to overcome the absolute grounds for refusal invoked by the BOIP. In particular, the court noted that, in order to be registrable, signs consisting of components that are descriptive of the goods at issue must confer a perceptibly different impression from that of the mere sum of its parts. This principle implies that either the sign must be more than the sum of its parts or the word must have acquired its own meaning that is independent of its components. The court also noted that:
  • all potential meanings of the mark should be assessed; and
  • it suffices that one of these meanings could be used to describe the goods' characteristics or intended purpose.
The court found that considerations set out in the judgment under appeal did not meet these requirements. The judgment was annulled and the case was remitted for reconsideration.

In Organisation Benelux de la Propriété Intellectuelle v Pierre Fabre Dermo Cosmétique, the Brussels Court of Appeal had ordered the registration of the trademark DERM'INTIM. It held that the word mark could serve as a trademark for soaps, cosmetics and dermo-cosmetic hygiene products. The court found that the mark, considered as a whole, produced a different impression from that of the sum of its parts - the prefix 'derma', referring to skin, and 'intime', meaning 'intimate'. It was held to be a fanciful combination with an unusual semantic structure due to the apostrophe between the terms.

The Court of Cassation, again relying on the judgments in Koninklijke KPN Nederland and Campina Melkunie, considered that these reasons were sufficient to conclude that the registration requirements had been met, as the Brussels Court of Appeal had established that the impression produced by the mark was more than merely the sum of the meanings of its components. The judgment under appeal was confirmed and the BOIP was ordered to pay costs.

The different outcomes of the two cases might suggest that the Court of Cassation was torn between a more permissive and a more restrictive approach to word marks that combine descriptive components. However, like the Court of Justice of the European Union, the Court of Cassation can rule only on points of law. The Court of Cassation accepted the Brussels Court of Appeal's finding of distinctiveness and non-descriptiveness in one case and rejected it in the other. However, the same legal principle was applied in the two cases: a combination of descriptive components in a word mark can clear the hurdles of non-descriptiveness and distinctiveness if the impression of the sum of the components differs from that of the descriptive components in themselves. Simply put, if one plus one equals no more than two, the sum of descriptive parts cannot be registered as a trademark.

Kristof Neefs, ALTIUS, Brussels

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