Section s3(1(c) of the Trade Marks Act 1994 (the Act) states that:

 3. - (1) The following shall not be registered -

 (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value,

This section is equivalent to Article 7(1)(c) of the Regulation on the Community Trade Mark (CTM Reg).  The European Court of Justice (ECJ) famously ruled on this provision in BABY-DRY so that is the landmark decision on.  In that decision, the ECJ did not consider the prior question of distinctiveness (Article 7(1)(b)/Section 3(1)(b)) or whether the trade mark Baby-Dry was acceptable under that heading for babies' nappies.  (As the mark distinctiveness is in relation to thegoods for which the applicant seeks registration.)

This may allow the Trade Mark Registry to reject signs that would pass s3(1)c) on the BABY-DRY grounds.  This seems perverse as it may well be easier to overcome s3(1)(c) than (b) but you won’t reach it.

BABY-DRY indicates that only marks which are no different from the usual way of designating the relevant goods or services or their characteristics are now debarred from registration by Section 3(1)(c).

Advocate General Jacobs in the Doublemint case, 2003, questioned:

..the extent to which Article 7(1)(c) of the Trade Mark Regulation must be interpreted  in the light of the aim referred to in the Windsurfing Chiemsee judgment, namely that descriptive signs and indications should be freely available to be used by all traders in relation to the relevant goods.

In his opinion in Baby-Dry, the approach was that in the scheme of the Community Trade Mark Regulation a trade mark could include signs or indications designating product characteristics but could not consist exclusively of them.

It is clear from the views expressed by the European Court of Justice in Companyline [2003] and the High Court in Have a Break [2002]  that Section 3(1)(b) has separate and independent scope from Section 3(1)(c).  This is apparently that the mark must be distinctive in relation to specified goods/services as opposed to under Baby-Dry whereby only overly usual juxtapositions of descriptive words is unacceptable.

Trademarkroom