ECJ reverses DOUBLEMINT decision

European Union

The European Court of Justice (ECJ) has reversed the Court of First Instance's (CFI) decision that the mark DOUBLEMINT was capable of registration, finding that the lower court should have concluded that the mark was descriptive, as designating a characteristic of the goods for which registration was being sought.

In March 1996 Wrigley applied to register DOUBLEMINT as a Community trademark in respect of various goods, including chewing gum. The Office for Harmonization in the Internal Market (OHIM) refused the application and Wrigley appealed.

The First Board of Appeal of the OHIM dismissed the appeal on the grounds that DOUBLEMINT was descriptive of certain characteristics of the goods in question, namely their mint-based composition and flavour. The CFI upheld an application by Wrigley for annulment of the First Board of Appeal's decision. The CFI found that DOUBLEMINT had an ambiguous and suggestive meaning that was open to various interpretations by consumers, and therefore was not "exclusively descriptive". The OHIM appealed the CFI's decision to the ECJ (see European Court of Justice set to rule on DOUBLEMINT registration).

The ECJ found that the CFI had erred in applying a test based on whether or not a mark is exclusively descriptive. According to the ECJ, this is not the test laid down by Article 7(1)(c) of the Community Trademark Regulation, which precludes registration of marks that consist exclusively of signs that may serve to designate characteristics of the goods to which they relate (ie, words that are simply descriptive of the product). If a mark is descriptive, then it is incapable of fulfilling the function of a mark to indicate the origin of the proprietor's goods. Descriptive words should be freely available for use by all as a matter of public interest. If a sign has at least one possible meaning that designates a characteristic of the goods or services for which registration is sought, then it should be refused registration under Article 7(1)(c), unless there is evidence that the mark has become distinctive through actual use, pursuant to Article 7(3). The CFI's decision was therefore set aside and the case referred back to the CFI.

In the earlier case of Proctor & Gamble v OHIM in 2001, the ECJ found that the mark BABY-DRY was registrable for baby nappies. The ECJ in that case found that the perceptible difference between the combination of BABY-DRY and the words used separately in everyday speech by the relevant consumers to describe the essential characteristics of nappies was sufficient to confer the necessary distinctive character to the overall word combination. Two years on, it appears that the BABY-DRY Case was the high-water mark and the ECJ is now taking a step back.

The decision is to be welcomed as a common-sense approach to seeking to protect common everyday words from being registered as trademarks, in the absence of any evidence that they are distinctive of a particular proprietor's goods or services. It aligns the Community trademark system more closely with the practice of the UK Trademark Registry.

Joel Smith and Naomi Gross, Herbert Smith, London

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