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Thursday, 23 October 2003


It's a bumper IP day for the ECJ. The court has ruled on the registrability of DOUBLEMINT in OHIM v Wrigley. The CFI had previously said that DOUBLEMINT was registrable for chewing gum because it was not exclusively descriptive of the applicant's goods since it had at least two possible meanings: this product contains 2 types of mint or this product contains twice the usual amount of mint. However, the ECJ has said that the CFI applied the wrong test to determining whether the mark is descriptive under Article 7(1)(c) of Regulation 40/94. Instead of looking at whether the mark is exclusively descriptive, the court should have looked at:

"whether the word at issue was capable of being used by other economic operators to designate a characteristic of their goods and services".

The focus of Article 7(1)(c) should be on whether, in the public interest, the mark should remain freely available for other traders to use. To this end, "A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned" (emphaisis added by the IPKat).

Therefore, the case was referred back to the CFI so that it can apply these principles.

The IPKat notes that this judgment focuses on the impact that the registration of a mark will have in the future on other traders, should they decide at some stage that they want to use it and on how the mark could be used, rather than concentrating on the way that the applicant is using the mark now. However, the DOUBLEMINT mark is almost certainly safe, whatever the outcome of this case before the CFI, since Wrigley has acquired distinctive character in the mark through use. (Acquired distinctiveness was not at issue in this case, only inherent distinctiveness was). The IPKat also points out that the ECJ did not directly address the impact that this case has on its earlier BABY-DRY decision.

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