Trade-mark Descriptiveness: A New Test in the EC

The European Court of Justice (ECJ) has set aside a lower court's decision which had held that the trade-mark DOUBLEMINT was registrable because it was not "exclusively descriptive". Wm Wrigley Jr Company (Wrigley) applied in 1996 for a European Community trade-mark of the word DOUBLEMINT for chewing gum.   The Trade-marks Office rejected the application.   On appeal by Wrigley, the Board of Appeal found that the word DOUBLEMINT was descriptive of certain characteristics of the goods, namely, their mint-based composition and their mint flavour and thus it could not be registered. On Wrigley's further appeal to the Court of First Instance, the Court held that the word DOUBLEMINT had an ambiguous and suggestive meaning which was open to various interpretations.   For that reason, it was not exclusively descriptive and therefore it could be registered. On an appeal by the Trade-marks Office to the final arbiter, the ECJ, it was held that the test of descriptiveness is not whether a mark is "exclusively descriptive", as applied by the Court of First Instance.   Rather, the ECJ ruled that a mark is not registrable if at least one of its possible meanings designates a characteristic of the goods or services.   Also, said the ECJ, if the mark is capable of being used by competitors to designate a characteristic of their own goods and services, then it should be refused.   The case was referred back to the Court of First Instance for final judgment based on the new test. For a copy of the ECJ judgment, see: http://makeashorterlink.com/?K5CB25276. Summary by: Hung Nguyen