UK: OHIM v Wrigley Jr Company C – Opinion of Advocate General Jacobs

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.

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.

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 refused for that reason. However the Advocate General points out that in Article 7(1)(c) the word "exclusively" qualifies the word "consists" and so there will be reason for refusal where every element has at least one possible descriptive use.

Secondly the CFI approach implies that where there are multiple possible meanings the mark cannot be descriptive. Jacobs notes this is wrong as a general principle, and contrary to the approach adopted by the CFI itself in the Daimler Chrysler case where the CFI stated that in order to bring Article 7(1)(c) into operation it is sufficient that one of a number of possible meanings is descriptive.

Jacobs then considers the meaning of "descriptiveness". He suggests there is a clear line to be drawn between terms used to "designate" the characteristics of products (in the language of Article 7(1)(c) ) and terms which are merely suggestive of such characteristics, although where the line lines is a matter of judgment in each case.

Jacobs proposes a non-exclusive three-part test: (i) first consider the way in which a term relates to the product or one of its characteristics. The more factual and objective the relationship, the more likely it is that the term will be used in trade as a designation of the goods or their characteristics; (ii) consider how down to earth the term is and how immediately any descriptive message will be conveyed; and, (iii) consider the importance of the characteristic described by the term to the product: if the characteristic is essential to the product or particularly important to a consumer’s choice then the case for refusing registration is strong.

Jacobs then goes on to consider two points relating to the Baby-Dry case.

Wrigley argued both at first instance and on appeal that the term DOUBLEMINT is not to be found in dictionaries but is Wrigley’s own "lexical invention". Further, that like "Baby-Dry", DOUBLEMINT has an elliptical nature, an unusual structure and a resistance to any intuitive grammatical analysis. Jacobs stresses that while these elements should be taken into account in assessing the registerability of a mark, their mere presence should not automatically mean registration be granted. In any event, Jacobs notes these features are considerably less marked in DOUBLEMINT than in Baby-Dry. In particular, unlike Baby-Dry there is no inversion of the usual word order. While DOUBLEMINT may be absent from dictionaries, "the degree of lexical invention deployed in its creation was essentially limited to removing the space between the two words, which may well be used together descriptively".

The other, perhaps more telling point on the Baby-Dry case relates to the suggestion by the ECJ that "any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance … is apt to confer distinctive character on the word combination …". Jacobs highlights that it would be helpful for the Court to clarify what it meant by "any perceptible difference", noting that there is a difference between "perceptible" and "minimal". In terms of form, a perceptible difference is one where the combined word is more important than the sum of its parts. In terms of meaning, a difference will be perceptible if the meaning evoked by the combined word is different to the sum of what is suggested by the descriptive components.

Jacobs concludes that the direct application of the test should mean that a mark is accepted for registration only when it is apparent to both traders and consumers that as a whole it is not suitable, in the ordinary language of trade, as a description of the characteristics of the product in question.

Jacobs then considers three additional points brought up the submissions.

Firstly, he deals with the suggestion that it is incorrect to look at the English language mark solely through the eyes of an English-speaking consumer. He notes that where an application is made to register a trade mark which consists of terms drawn from a language used in trade in the community, the first stage of the assessment under Article 7(1)(c) must be from the standpoint of a native speaker of the language concerned. If at this stage it is clear that the terms may be used in trade to designate characteristics of the relevant products, it is not necessary to consider the position of speakers of other languages.

Jacobs recognises that it may be necessary in some cases for a sign consisting in terms drawn from one language to be assessed through the eyes of a community consumer whose language is different, although it would be "inappropriate to take as a yardstick a consumer struggling with an imperfect knowledge of a foreign language".

Jacobs then considers the suggestion that the Baby-Dry case makes it easier for trade mark owners to monopolize descriptive terms and move away from the principle set out in Windsurfing Chiemsee, that descriptive signs and indications should be freely available to be used by all traders in relation to relevant goods. Jacobs recognizes that in the real world a defence under Article 12(b) might be worth rather less then its ostensible value in law, and that proceedings can have a chilling effect where the outcome is uncertain; however he states that the Baby-Dry case does not shift the balance in favour of trade mark owners and does not depart from the view set out in Windsurfing Chiemsee that it is in the public interest that descriptive signs may be freely used by all.

We wait to see whether the ECJ will adopt the reasoning set out in the Attorney General’s opinion. Thereafter it will remain to be seen whether Wrigleys has a further argument based on Article 7(3), which was not considered in this case.

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