Opinion of the Advocate General — ECLI:EU:C:2001:203
Date: 2001-04-05
Language of the case: French
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - successful

Summary of the Judgment 
1. Appeal — Admissibility — Where a party partially fails in its application 
(EC Statute of the Court of Justice, Art. 49) 
2. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks which consist exclusively of signs 
or indications which may serve to designate the characteristics of a product — Criteria 
(Council Regulation No 40/94, Arts 7(1)(b) and (c) and 12) 
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SUMMARY — CASE C-383/99 P 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusal — Marks which consist exclusively of signs 
or indications which may serve to designate the characteristics of a product — 'BABY-
DRY' 
(Council Regulation No 40/94, Art. 7(1) (c)) 
1. Where the annulment by the Court of 
First Instance of the act submitted to it 
for judicial review is only partial, and 
notwithstanding the fact that the 
operative part of the judgment does 
not expressly restate that limitation, 
the judgment in question gives the 
appellant only partial satisfaction. 
Since the appellant has therefore par­
tially failed in its application, it has an 
interest in appealing against that judg­
ment. The appeal, which seeks annul­
ment of that aspect of the contested 
judgment, must therefore be declared 
admissible. 
(see paras 22, 25-27) 
2. It is clear from Article 7(1 )(b) and (c) 
of Regulation No 40/94 on the Com­
munity trade mark, taken in conjunc­
tion with Article 12, that the purpose 
of the prohibition of registration of 
purely descriptive signs or indications 
as trade marks is to prevent registration 
as trade marks of signs or indications 
which, because they are no different 
from the usual way of designating the 
relevant goods or services or their 
characteristics, could not fulfil the 
function of identifying the undertaking 
that markets them and are thus devoid 
of the distinctive character needed for 
that function. 
The signs and indications referred to in 
Article 7(l)(c) of that regulation are 
thus only those which may serve in 
normal usage from a consumer's point 
of view to designate, either directly or 
by reference to one of their essential 
characteristics, goods or services such 
as those in respect of which registration 
is sought. Furthermore, a mark com­
posed of signs or indications satisfying 
that definition should not be refused 
registration unless it comprises no 
other signs or indications and, in 
addition, the purely descriptive signs 
or indications of which it is composed 
are not presented or configured in a 
manner that distinguishes the resultant 
whole from the usual way of designat­
ing the goods or services concerned or 
their essential characteristics. 
As regards trade marks composed of 
words, descriptiveness must be deter­
mined not only in relation to each 
word taken separately but also in 
relation to the whole which they form. 
Any perceptible difference between the 
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PROCTER & GAMBLE v OHIM 
combination of words submitted for 
registration and the terms used in the 
common parlance of the relevant class 
of consumers to designate the goods or 
services or their essential characteristics 
is apt to confer distinctive character on 
the word combination enabling it to be 
registered as a trade mark. 
(see paras 37, 39-40) 
3. As regards the registration of 'Baby-
Dry' as a Community trade mark for 
disposable diapers made out of paper 
or cellulose and diapers made out of 
textile, this word combination cannot 
be regarded as exhibiting, as a whole, 
descriptive character; it is a lexical 
invention bestowing distinctive power 
on the mark so formed and may not be 
refused registration under Arti­
cle 7(1 )(c) of Regulation No 40/94. 
Whilst each of the two words in the 
combination may form part of expres­
sions used in everyday speech to desig­
nate the function of babies' nappies, 
their syntactically unusual juxtaposi­
tion is not a familiar expression in the 
English language, either for designating 
babies' nappies or for describing their 
essential characteristics. 
(see paras 43-44) 
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