OHIM v Wrigley Jr Company C - Opinion of Advocate General Jacobs

Author:Mr Julian Ward
Profession:Wragge & Co LLP
 
FREE EXCERPT

Proceedings to date

In March 1996 Wrigley applied to OHIM for registration of the word DOUBLEMINT as a community trade mark for goods (including chewing gum) in several classes. The office refused the application by virtue of Article 7(1)(c) of Regulation No 40/94, holding that the trade mark consisted "exclusively of the word DOUBLEMINT, which may serve in trade to designate the characteristics of the goods".

This decision was reversed in September 1999 by the CFI which held that the word DOUBLEMINT is not "exclusively descriptive". It found that the word "Double" is unusual when compared with other English words such as 'much', "strong", "extra", "best" or "finest", and that when combined with the word "mint", it has two distinct meanings for the potential consumer: "twice as much mint" or "flavoured with two different varieties of mint". The CFI also found that the word DOUBLEMINT has numerous other possible meanings, and that this would be apparent to the average English-speaking consumer, thus depriving the mark of any descriptive function for the purposes of Article 7(1)(c). Finally, the CFI held that the word DOUBLEMINT, when applied to the goods, has an ambiguous and suggestive meaning and does not enable the public immediately and without further reflection to detect any e description of the characteristics of the goods.

On 20 April 2001, OHIM lodged an appeal against this decision.

The case law - Windsurfing Chiemsee and Baby-Dry

Advocate General Jacobs deals in detail with the relationship between the decision of the CFI in DOUBLEMINT and the Windsurfing Chiemsee and Baby-Dry cases.

Windsurfing Chiemsee was precluded from registration, under Article 3(1)(c) of the European Trade Mark Directive (89/104), on the ground that the mark serves as a designation of geographical origin.

In Baby-Dry, the ECJ said that the purpose of Article 7(1)(c) of the Regulation was to prevent registration of signs or indications which, because they were no different from the usual way of designating the relevant goods or services, could not fulfil the function of identifying the undertaking that markets them. The combination of the descriptive words might still be distinctive if it was not used in common parlance.

The Advocate General's opinion

Advocate General Jacobs' opinion highlights two flaws in the CFI's decision in DOUBLEMINT. First the CFI held that Doublemint could not be characterised as "exclusively descriptive", so should not have been...

To continue reading

REQUEST YOUR TRIAL