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Procter & Gamble v. OHIM (the "Baby Dry" case) is a community trade mark decision by the European Court of Justice(ECJ), case C-383/99, which dealt with whether, under Article 7(1)(b) and (c) of Regulation No. 40/94, the term 'BABY-DRY, used in connection with the sale of disposable diapers, was precluded from registration as inherently void of distinctiveness because it consisted exclusively of words that describe the intended purpose of the goods.

Background
Procter & Gamble filed an application with the Office for Harmonization in the Internal Market (OHIM) on April 3, 1996, for registration of 'BABY-DRY as a community trade mark for disposable diapers. On January 29, 1998, OHIM's examiner refused the application. Procter & Gamble's appeal against the examiner's decision was dismissed by the First Board of Appeal of the OHIM, who found that 'BABY-DRY "consisted exclusively of words which may serve, in trade, to designate the intended purpose of the goods, and was devoid of distinctive character, therefore not eligible for registration under Article 7(1)(b) and (c) of Regulation No 40/49. The board also concluded that Procter & Gamble's submission of evidence relating to acquired distinctiveness was inadmissible on the ground that it had not been made before the examiner at the OHIM.

Procter & Gamble appealed the decision made by the First Board of appealed up to The Court of First Instance, who held that 'BABY-DRY was not capable of constituting a Community trade mark because signs composed exclusively of words that serve in trade to designate the intended purpose of goods must be regarded as intrinsically incapable of distinguishing the goods of one undertaking from those of another. However, the court overturned the board's decision to refuse evidence concerning the acquired distinctiveness of 'BABY-DRY because Article 62 of Regulation No 40/94 does "not entitle a board to reject a submission solely on the ground that it has not been raised before the examiner."

Procter & Gamble
In the appellant's view, only signs or indications that were both descriptive and incapable of becoming distinctive could be refused registration as Community trade marks under Article 7(1)(c) Regulation No 40/94. Procter & Gamble argued that the Court of First Instance, in holding that 'BABY-DRY was not capable of distinguishing disposable diapers, based its decision on an outdated view of trade marks in which registration grants the holder of the mark a monopoly right over the signs or indications of which it is composed but, the modern view underlying Regulation No. 40/49 is that the descriptiveness of a sign is only one aspect of the ground for refusing a term, distinctiveness and not being solely descriptive, is an additional consideration.

Office for Harmonization in the Internal Market
OHIM did not disagree, but it argued that "where a sign is solely descriptive, there is a presumption that it lacks distinctive character.

Decision
The ECJ reasoned that, in light of Article 4, 7(1), and 12 of Regulation No 40/49, the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is to prevent registration of signs or indications that are no different from the normal way a consumer designates the relevant goods or services. Regarding a mark composed of multiple words, any perceptible difference between the combination of words and the normal parlance of the relevant class of consumers may demonstrate a sufficient level of distinctiveness so as to enable the sign or indication to be registered as a trade mark. In order to determine whether a term such as 'BABY-DRY is capable of distinctiveness, "it is therefore necessary to place oneself in the shoes of an English Speaking Consumer." Although each of the two words in the combination form part of expression that is used in everyday speech to designate the function of diapers, their syntactically unusual juxtaposition is not a typical expression used to designate diapers or their essential characteristics. The court ruled that "[w]ord combinations like 'BABY-DRY cannot be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctiveness power" and cannot be refused under Article 7(1)(c).

The Third Board of Appeal
After analyzing the ECJ's decision in order to implement it, the Third Board of Appeal interpreted the judgement as positing the principle that any perceptible difference between the combination of words submitted for registration and the terms as used in trade enables the sign to be registered. The Board also noted that 'BABY-DRY is of an extremely weak character, since both words are quite obvious considering the goods applied for.

OHIM's Examination Procedure
After the ECJ's decision in the 'Baby-Dry case OHIM was left with the question of how stringent the examination should be and the level of descriptiveness allowed before an indication or sign should be precluded from community trademark registration. Today it is accepted that OHIM's examination of CTM applications must be stringent but, as OHIM is not bound by its earlier decisions and each national trademark system is autonomous, coherence remains an issue for both OHIM and national Offices.

The European Court of Justice
The ECJ's decision was criticized for setting a very low threshold for the registration of descriptive marks, thereby raising concerns that ordinary terms and phrases might be monopolized. However, more recent cases, such as OHIM v. Wm Wrigly Jr. Co., demonstrate that the ECJ is willing to temper its position. In that decision the ECJ was unwilling to allow the registration of DOUBLEMINT for chewing gum, which indicated a doubling of mint flavor.