A recent European Union ("EU") trade mark decision on the registrability of the trade mark Corn Thins is interesting not only because it deals with newly coined expressions and the issue of distinctiveness, but it also shows how a bit of common sense can go a long way.

The crisp issues (pun intended) in the case in question were whether the trade mark Corn Thins was distinctive for goods that were essentially crispbread slices made of corn, and whether an EU trade mark registration was valid.

The lower tribunal (the Cancellation Division) held that the trade mark Corn Thins was distinctive, and thus a valid registration. It adopted a somewhat literal and pedantic approach and said that the term Corn Thins was a neologism; that is, “a new word or expression”. It justified this finding by saying that the word “thins” is not a noun but a new and playful way to name a product from a specific producer and is registrable as a trade mark.

This matter was taken on appeal, and the Board of Appeal adopted a very different approach; one that was far more pragmatic, saying that it was quite obvious that most English speakers would understand the word “thins” in a descriptive sense. It stated that: “Indeed no evidence at all is necessary for the self-evident fact that the average English-speaking consumer will ultimately perceive the word ‘thins’ … as a description that such slices are thin.” It added: “The relevant products being slices of food, the only reasonable quality that the word ‘thins’ could refer for the English-speaking relevant public is that the slices are thin. This is not mere allusion but it clearly describes the product at hand, regardless of the fact that the word may be newly coined and is not present in English dictionaries.”

The Board of Appeal referred to the famous EU case of Doublemint, which it said was authority for the proposition that the test is whether the trade mark could be descriptive, rather than whether it was descriptive at the time of registration. The Doublemint decision is one of the classic EU judgments that deal with distinctiveness, neologisms and the like (others include the Baby-Dry and the Biomild decisions). These cases have taught us various things, including the following:

· a trade mark will be distinctive if there is a “perceptible difference” between the trade mark applied for and the term commonly used by consumers to describe the goods.

· if just one possible meaning of a trade mark is descriptive, the application must be refused – it makes no difference if there are other words that describe the goods.

· a mere combination of elements (a neologism), each of which is descriptive, will itself be descriptive unless there is a perceptible difference between it and the sum of its parts. This might be achieved by introducing an unusual variation, particularly with syntax, meaning, or if the combination creates an impression that is far removed from the meaning produced by a mere combination of meanings.

The Board of Appeal dismissed further arguments that were put forward in support of the Corn Thins trade mark registration. One of these was that, even if the word “thins” is descriptive, Corn Thins is a combination of two descriptive terms, and two wrongs somehow make a right. Another argument was that the capital letter “T” in the trade mark Corn Thins made all the difference.

It’s hard to argue with the court’s finding in this case as it’s both sensible and logical. However, would this matter have gone the same way in South Africa? The distinctiveness bar tends to be a bit lower in South Africa and it’s possible that the literal or pedantic approach might have carried the day. Regular readers of our articles will know that South Africa does have some interesting trade mark decisions.

One such case is the high court decision of Union-Swiss (Pty) Ltd v Bio-Cream Cosmetics and another (North Gauteng High Court, Judge Rabie, 17 July 2015) (covered in a previous ENSight). This case involved the distinctiveness or otherwise of the trade mark Bio-Oil for oils, and the literal approach was very much in evidence. Dealing with a passing off claim involving the trade mark Bio Lotion, the court held that consumers would “undoubtedly consider that the Bio-Lotion product is a line-extension of the well-known Bio-Oil product”. The court went so far as to describe the word “bio” as a “striking feature”. Dealing with an application to cancel a trade mark registration, the court said this: “A descriptive term would, as a general rule, describe a product. The word ‘bio’ does not describe an oil or any type of cosmetic product. It is not an everyday word in relation to any product in class 3. In fact it describes nothing. At best it is an illusion [sic] to something biological.” It’s interesting to note that Europe’s highest court once held that the trade mark Bio ID was non-distinctive and, therefore, unregistrable.

As it’s always worth having a trade mark registration, companies should strive to create trade marks that aren’t descriptive or commonplace, but rather ones that stand out from the crowd. A neologism is a good option, but even a neologism needs some craft.

Chavern Ismail

IP senior associate

[email protected]

+27 60 974 9662