In March 1996, Wrigley applied to OHIM for registration of the word "Doublemint"
as a Community trade mark for chewing gum. OHIM refused that application on
the ground that the word "Doublemint" was descriptive of certain characteristics of the
goods concerned and that it could not be registered as a trade mark
under the Community rules.
Wrigley appealed against the decision to the Court of First Instance of the
EC. By judgment of 31 January 2001, the Court of First Instance annulled
OHIM's decision, holding that the word "Doublemint" was not "exclusively descriptive", inter alia,
because the combination of the words "double" and "mint" could have two distinct
meanings: "twice the usual amount of mint" or "flavoured with two varieties of
mint". The Court of First Instance also found that the word "mint" was
a generic term which included a number of different types of mint. The
Court therefore held that the numerous meanings of "Doublemint" deprived the sign of
any descriptive function and that the word could be registered as a Community
trade mark.
OHIM appealed against that judgment to the Court of Justice.
The Court of Justice points out that, by prohibiting the registration as Community
trade marks of signs which may serve to designate the characteristics of the
goods or services concerned, Community law is pursuing an aim which in the
public interest, namely that descriptive signs or indications may be freely used by
all.
A sign must be refused registration if at least one of its possible
meanings designates a characteristic of the goods or services concerned.
In holding that "Doublemint" could not be characterised as exclusively descriptive and could
therefore be registered as a Community trade mark, the Court of First Instance
applied a test based on whether the mark was "exclusively descriptive", which is
not the test laid down by the regulation on the Community trade mark.
In so doing, it failed to ascertain whether "Doublemint" was capable of being
used by other economic operators to designate a characteristic of their goods and
services.
The Court of Justice accordingly sets aside the judgment of the Court of
First Instance and refers the case back to that Court for judgment in
accordance with this interpretation of Community law.
Unofficial document for media use which is not binding on the Court of First Instance. In principle it will be available from midday CET on the day of delivery For additional information please contact Christopher Fretwell Tel: (00352) 43.03.33.55; Fax: (00352) 43.03.27.31 |
See judgment in Case T-193/99 Wrigley v OHIM [2001] ECR II-417.