European Court of Justice set to rule on DOUBLEMINT registration

European Union

The European Court of Justice (ECJ) has heard arguments from the Office for Harmonization in the Internal Market in its appeal to reverse the decision of the Court of First Instance, allowing chewing gum company Wrigley to register DOUBLEMINT as a Community trademark. The ECJ's judgment, expected within the next few months, should further clarify the test for determining the point at which trademarks become too descriptive, or not sufficiently distinctive, to register.

The ECJ, in the famous BABY-DRY Case (Procter & Gamble v Office for Harmonization in the Internal Market), set out the test for determining whether or not a trademark is too descriptive to register. The court held that a mark composed of a combination of signs or indications that, taken separately, would fall within the prohibition of descriptive marks pursuant to Article 7(1)(c) of the Community Trademark Regulation:

"should not be refused registration unless [the mark] 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 designating the goods and services concerned or their essential characteristics."

By this the court was suggesting that, if a trademark taken as a whole exhibits some spark of distinctiveness arising from the way in which the component signs of the mark are arranged as distinct from the components themselves, the mark should not be excluded from registration.

The DOUBLEMINT Case is perhaps distinguishable from the BABY-DRY Case in that the Court of First Instance did not find a spark of distinctiveness in the juxtaposition of the components of the mark, but it did conclude that the combination of the words 'double' and 'mint' gave rise to more than one descriptive meaning for the goods at issue. The Court of First Instance reasoned that, because a number of meanings could be implied from the mark as a whole, it was sufficiently ambiguous to defeat claims of descriptiveness pursuant to Article 7(1)(c).

This finding of distinctiveness (and lack of descriptiveness) does not seem as strong as that set out by the ECJ in BABY-DRY and it will be interesting to see whether the ECJ upholds the Court of First Instance's decision, thereby further clarifying the test for registration in Article 7(1)(c). In any event, it seems likely that the application of the BABY-DRY test will be at issue, rather than a review of the test itself.

Laura Scott, McCann FitzGerald, Dublin

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