On – my birthday – October 22, 2009 the Belgian Supreme Court (‘Hof van Cassatie van België’) decided an interesting case between the Benelux Organisation for Intellectual Property (BOIP) and Janssen Pharmaceutica with regard to the registration in the Benelux of ‘Summer Skin’ as a trade mark for goods in class 3 and 5 (RoC cosmetics). BOIP had refused to register the trade mark, probably because it was deemed to be descriptive for (features of) the goods, but the Brussels’ Court of Appeal apparently came to another conclusion. The Court of Appeal found that ‘Summer Skin’ was not descriptive and distinctive.
According to the Court of Appeal the word combination ‘Summer Skin’ is a sign which results from the use of the goods for which it is used. It took into consideration for example that in the perception of the target public in the Benelux ‘summer skin’ has no crude commercial tenor, but instead reflects fantasy and even to a certain extent appeals to an atmospere of euphoria. Thus – concluded the Court of Appeal – ‘Summer Skin’ – considered in its entirity – is to a certain extent unmistakably recognizable for the goods for which the sign is registered as a trade mark. Although the Court of Appeal took into account too that the sign is to a certain extent descriptive – also in the Benelux although the sign consists of a combination of English words – the Court of Appeal did not consider that to be decisive: it ruled that the two words are joined in a connection that considered in its entirity can not be reduced to their sole combination. Besides that the Court of Appeal considered that it had been established that the combination of the two words as such do not have a certain meaning, but refer to a result in demand after use of the goods or to pleasant circumstances. The decision of the Court of Appeal however has found no favour in the eyes of the Belgian Supreme Court. With reference to the ECJ’s decisions in Koninklijke KPN Nederland (case C-363/99) and Campina Melkunie (case C-265/00) the Belgian Supreme Court establishes that according to art. 3 par. 1 under b and c of Directive 89/104/EEC and the applicable provisions of the Benelux Convention on Intellectual Property (art. 2.11.1 b and c) a trade mark that describes a feature of goods for that same reason necessarily lacks distinctiveness. Furthermore the Supreme Court finds that a registration of a name as a trade mark should be refused if it can be used as a description for (a feature of) the goods for which the trade mark is registered. That will do: de facto use as such is not needed. The Supreme Court refers to the ECJ decisions in Wrigley (C-191-01), Koninklijke KPN Nederland and Campina Melkunie. Therefore the decision of the Court of Appeal was set aside.