The Community Trade Mark (CTM) gives its owner a uniform right
applicable in all EU Member States, through a single registration.
The Office for Harmonisation in the Internal Market (OHIM), which
regulates EU trade marks and designs, initially rejected Wrigley's
application to register the word "Doublemint" as a CTM for its
products.
The decision was based on the CTM Regulation, which provides
that "trade marks which consist exclusively of signs or indications
which may serve, in trade, to designate the kind, quality,
quantity, intended purpose... or other characteristics of the goods
or services" cannot be registered.
The OHIM claimed that Doublemint is the combination of two
exclusively descriptive English words.
Wrigley, on the other hand, claimed that the OHIM decision was
wrong, and that the word "Doublemint" is not exclusively
descriptive, since it includes "expressive elements." The company
took the case to the European Court of First Instance.
The court decided to grant the CTM, reasoning that the word has
"an ambiguous and suggestive meaning" and, for that reason, it
cannot be considered as descriptive of certain characteristics of a
chewing gum.
"The term", the court said, "does not enable the public
concerned immediately and without further reflection to detect the
description of a characteristic of the goods in question."
The OHIM appealed the decision. In a hearing before the European
Court of Justice last week, the OHIM reportedly claimed that an
expression is descriptive not only where it is "factually
descriptive", but also where it is "potentially descriptive in the
mind of the consumer."
The decision in the Wrigley case is expected within the next
three to six months. The UK and German trade mark offices have
reportedly supported the OHIM's position in last week's
hearing.
The European Court of Justice has, in 2001, ruled that Procter
& Gamble's application for a trade mark on the word "Baby-Dry"
for nappies was registrable, overruling an OHIM decision.
The court found that, due to the "syntactically unusual
juxtaposition" of the two descriptive English words, the mark
itself was not exclusively descriptive.
