BLOG@IP::JUR

Patent Attorney Axel H Horns' Blog on Intellectual Property Law.

Disclaimer & About This Website

Visit the archives

Sunday, October 26, 2003

ECJ decision in re CTM case C-191/01 "DOUBLEMINT".

On October 23, 2003 the

European Court of Justice (ECJ) has taken a

decision in the matter of case C-191/01 "DOUBLEMINT". According to the facts and background section of the current decision, on March 29, 1996 Wrigley applied to OHIM for registration as a Community trade mark of the word DOUBLEMINT for goods within, inter alia, Classes 3, 5 and 30 of the Nice Agreement, in particular chewing gum. The examiner at OHIM rejected that application by decision of 13 October 1998, following which Wrigley brought an appeal before OHIM. By the contested decision, the First Board of Appeal of OHIM dismissed the appeal on the ground that the word DOUBLEMINT, a combination of two English words with no additional fanciful or imaginative element, was descriptive of certain characteristics of the goods in question, namely their mint-based composition and their mint flavour, and that it could therefore not be registered as a Community trade mark by virtue of Article 7(1)(c) of Regulation No 40/94. Procedure before the Court of First Instance and the contested judgment By an application lodged at the Registry of the Court of First Instance on 1 September 1999, Wrigley brought an action for annulment of the contested decision. The Court of First Instance upheld that action.

The findings section of the ECJ in this cases comprises a very important statement: "In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provisions itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned."

The Court of the First Instance was criticised: "In the present case, the reason given by the Court of First Instance [...] for holding that the word at issue could not be refused registration under Article 7(1)(c) was that signs or indications whose meaning goes beyond the merely descriptive are capable of being registered as Community trade marks and that that term cannot be characterised as exclusively descriptive. It thus took the view that Article 7(1)(c) of Regulation No 40/94 had to be interpreted as precluding the registration of trade marks which are exclusively descriptive of the goods or services in respect of which registration is sought, or of their characteristics. In so doing, the Court of First Instance applied a test based on whether the mark is exclusively descriptive, which is not the test laid down by Article 7(1)(c) of Regulation No 40/94. It thereby failed to ascertain whether the word at issue was capable of being used by other economic operators to designate a characteristic of their goods and services. "

In consequence, the ECJ referred the case back to the Court of First Instance.

Hence, in future it will probably much harder to obtain a registration for quasi-descriptive marks. This will be true not only with regard to the practice of the OHIM but also with regard to the national Offices because of the respective Law is harmonised throughout the EU and should be applied everywhere in the same way.

[Permalink]