The question of how distinctive a trade mark has to be in order to gain registration has, once again, come under the microscope, as shown by the recent glut of cases debating this point. The decisions of the Court of Justice of the European Communities interpret the law applicable to Community and domestic trade marks alike.

In IVG v Immobilien (concerning opposition to the registering of the letter ‘I’ in an almost identical font to Times New Roman) the Court of First Instance – the appeal court for Community trade mark applications – concluded that a lack of distinctive character cannot arise merely from the finding that a mark does not look unusual or striking and, further, that there is no specified level of creativity or imaginativeness. This case is seen to serve as a warning that trade marks should not be discounted solely because they appear to lack creative character.

However, Twist and Pour (for 'hand held plastic containers sold as an integral part of a liquid paint containing, storage and pouring device') and Lokthread (for 'bolts, bolts of metal, nuts, nuts of metal') were held to be unregistrable. The Court of First Instance considered that they were devoid of distinctive character, being merely descriptive of characteristics of the products.

In the Waterford Trade Mark case, the glass company opposed the registration of Waterford Stellenbosch by a South African wine producer. The question was whether wine and wine glasses were considered by the court to be similar goods. The Court of First Instance held that despite the closeness of the products there was not sufficient similarity between these marks. The court also concluded that, whilst one could see how the products complemented each other, wine could also be drunk from other vessels, and glassware could be used for alternate purposes.

In Dyson v Registrar of Trade Marks the question was whether the fact that Dyson (at that time) had a monopoly on the bagless vacuum cleaner market could confer sufficient distinctiveness to warrant registering the transparent bin or collection chamber as a trade mark. This case was referred to the Court of Justice of the European Communities, who ruled that it was merely a ‘property of the product’ and not actually a sign, so was therefore not capable of being registered as a trade mark.