Wrigley's unstuckYesterday's Wrigley decision could restrict the ability of brand
owners to register marks that could be descriptive. It said that a
sign may not be registered as a community trade mark if one of its
possible meanings can designate a characteristic of the goods
concerned.
Wm Wrigley Jr. Company's Doublemint gum has long enjoyed trade
mark protection in the US, where it has been sold since 1914.
The company wanted equivalent protection in Europe. However, the
EU's Community trade mark office, OHIM, rejected the company's 1996
application, saying the mark was merely descriptive. Wrigley
appealed to the European Court of First Instance – and won. So OHIM
appealed the case to Europe's highest court, based in
Luxembourg.
In April this year, the European Court of Justice's Advocate
General delivered an opinion in the case. His decisions are not
binding on the Court – but tend to be highly persuasive. And
Advocate General Francis Jacobs' view was that Doublemint "is a
factual, objective reference to mint flavour in some way doubled".
An "imaginative element" was found to be lacking from the mark.
Yesterday, the European Court of Justice agreed with the
Advocate General, overturning the ruling of the Court of First
Instance.
The Court of Justice said 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 is in the public interest, namely that
descriptive signs or indications may be freely used by all.
The ruling confirms that a sign will be refused registration if
at least one of its possible meanings designates a characteristic
of the goods or services concerned.
The Court of Justice explained where the lower Court went wrong.
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. The ruling doesn't actually mean that
Wrigley has been refused a mark – but the case has now been
referred back to the Court of First Instance which must pass
judgment in accordance with this new interpretation of Community
law. Which surely means that Wrigley's case is lost.
Adidas rival earns its
stripes
Adidas went to court to stop a Dutch company, Fitnessworld,
using a two-stripe motif on its sportswear. But the German
sportswear giant yesterday lost an important argument in its
seven-year legal battle, albeit the court gave it some cause for
optimism.
Europe's highest court said that the proprietor of a trade mark
with a reputation cannot prevent the use of a similar sign viewed
purely as a decorative motif. Like the Wrigley case, the European
Court of Justice largely followed the advice of its Advocate
General.
However, the Court qualified its judgment. It said that there
can be an infringement to the mark with a reputation when
the degree of similarity between that mark and the sign has the
effect that the public establishes a link between the sign and the
mark without necessarily confusing them. The key would appear to be
showing that the public has established a link between sign and
mark.
Adidas has a registered trade mark in the Benelux for its motif
of three vertical stripes running parallel which appear on sports
clothing. It first sued Fitnessworld in a Dutch court, claiming a
likelihood of confusion between the two motifs on the part of the
public, saying Fitnessworld takes advantage of the repute of the
Adidas mark and impairs the exclusivity of that mark.
Fitnessworld argued that the motif is viewed purely as an
embellishment by the relevant section of the public and there
cannot, therefore, be an infringement of the mark.
The case went to the Supreme Court of the Netherlands, which
then referred several questions to the European Court of Justice
for a preliminary ruling on the interpretation of the Community
Directive on trade marks.
The Court of Justice has found that it is not necessary for
there to exist a likelihood of confusion between the sign and the
mark with a reputation in order to claim infringement of that mark.
It is sufficient if the relevant section of the public establishes
a link between the sign and the mark even though it does not
confuse them.
However, the Court has specified that where, according to a
finding of fact by the national court, the relevant section of the
public views the sign purely as an embellishment, it does not
necessarily establish any link with the mark with a reputation. It
follows that the proprietor of the mark with a reputation cannot
prevent the use of that embellishment by a third party.
The case will now return to the Dutch Supreme Court, which has
to balance these arguments.
