On 23 October 2003 the European Court of Justice (ECJ) gave judgment in two cases which raised key issues of trade mark law.
In DOUBLEMINT (Wrigley v OHIM) the ECJ set aside the original judgment of the Court of First Instance (which had held that the word DOUBLEMINT was not exclusively descriptive and could not therefore be refused registration) and adopted a reasoning which restricts the scope of the BABY-DRY decision (Procter & Gamble v OHIM  ECR I-6251) and the extent to which a sign consisting of descriptive words may be registrable.
In Adidas (a reference to the ECJ by the Netherlands High Court in proceedings brought by Adidas against Fitnessworld Trading Limited) the ECJ considered the application of Article 5(2) of the European Trade Mark Directive (First Council Directive 89/104/EEC of 21 December 1988, OJ 1989 L40, p.1) - the Article which confers protection to famous marks against dilution and tarnishment of the mark. The Adidas decision also considers whether a sign which is viewed as an embellishment should be afforded a different level of protection under Article 5(2).
In March 1996, Wrigley applied to register the word DOUBLEMINT as a Community trade mark for a number of classes of goods including in particular chewing gum. Both the OHIM examiner and later the OHIM Board of Appeal found that the term DOUBLEMINT was not registrable as it was purely descriptive and therefore fell within the ambit of Article 7(1)(c) of the Community Trade Mark Regulation (Regulation No. 40/94):
Absolute grounds for refusal
1. The following shall not be registered -
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods…or other characteristics of the goods…”
The OHIM examiner and Board of Appeal found that DOUBLEMINT is a combination of two English words with no additional fanciful or imaginative element. It was descriptive of certain characteristics of the relevant goods (their mint-based composition and their mint flavour).
Wrigley appealed the decision to the Court of First Instance which upheld the appeal.
The Court of First Instance considered that the intention of the Community legislature in Article 7(1)(c) was to prevent the registration of signs which, due to their purely descriptive nature, are incapable of distinguishing the goods of one undertaking from those of another. In contrast, the Court of First Instance observed that signs or indications whose meaning goes beyond the merely descriptive are capable of being registered as Community trade marks.
The Board of Appeal had been wrong in regarding the term DOUBLEMINT as exclusively descriptive – the word DOUBLE when combined with the word MINT has two distinct meanings for the potential consumer: twice the usual amount of mint or flavoured with two varieties of mint. Further, there are several possible ways of combining two sorts of mint and various strengths of flavour are possible for each combination.
The Court of First Instance concluded that the numerous meanings of the composite term DOUBLEMINT are immediately apparent to an average English-speaking consumer and therefore deprive the sign of any descriptive function (for a consumer without a mastery of the English language, the term would, by its very nature, have a vague and fanciful meaning). The term DOUBLEMINT when applied to the relevant goods, “has an ambiguous and suggestive meaning which is open to various interpretations. The multiplicity of possible semantic combinations therefore precludes the consumer from remembering one of them in particular. Accordingly, the term at issue does not enable the public concerned immediately and without further reflection to detect the description of a characteristic of the goods in question”. The Court of First Instance therefore concluded that the term DOUBLEMINT could not be characterised as exclusively descriptive and annulled the Board of Appeal decision.
Following submissions from OHIM, Wrigley, the United Kingdom Government and the German Government, the ECJ considered the application of Article 7(1)(c) of the Regulation to the DOUBLEMINT mark.
The ECJ observed that the purpose of Article 7(1)(c) was to protect the public interest that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sold may be freely used by all. When deciding whether Article 7(1)(c) is applicable, it is sufficient that the signs and indications composing the mark could be used in a way that is descriptive of the goods or services for which the application is filed or of characteristics of those goods or services – it need not, at the time of application for registration, actually be in use for those purposes.
The ECJ concluded therefore that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. The test applied by the Court of First Instance – namely whether the mark was exclusively descriptive of the goods or services in respect of which registration is sought or of their characteristics – was not the correct test. By applying that test the Court of First Instance had failed to determine whether the word DOUBLEMINT was capable of being used by other economic operators to designate a characteristic of their goods and services.
This decision narrows the scope of the ECJ decision on registrability of the BABY-DRY mark. Following the BABY-DRY decision (in which the term BABY-DRY was found to be registrable for babies’ nappies on the basis that it represented an unusual juxtaposition of the two words BABY and DRY and was not a familiar expression in the English language, either for designating babies’ nappies or for describing their essential characteristics) it was understood that terms which had previously been thought to be descriptive and therefore unregistrable could now be registrable.
In BABY-DRY, the ECJ considered Article 7(1) of the Regulation together with Article 12 (defence for third parties using, in accordance with honest practices, indications concerning the kind, quality, quantity etc of the goods or services). It concluded that the purpose of the prohibition of purely descriptive signs as trade marks was to prevent registration of signs which “because they are not different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function”.
This reasoning had represented a departure from the previous English law of trade marks – for instance, in AD2000 ( RPC 168 at 176) the Appointed Person had, in referring to the defence under section 11 of the UK Trade Marks Act (equivalent to Article 12 of the Regulation) stated that “the first line of protection is to refuse registration of signs which are excluded from registration by the provisions of section 3”. The Appointed Person approved the rationale that “the privilege of a monopoly should not be conferred where it might require honest men to look for a defence”.
This difference in approach had been noted by the Advocate General in BABY-DRY ( ETMR 75). He had concluded that Article 7(1)(c) should be interpreted “as intended not to prevent any monopolising of ordinary descriptive terms but rather to avoid the registration of descriptive brand names for which no protection could be available”.
In DOUBLEMINT, however, the ECJ appears to be backtracking somewhat from its reasoning in BABY-DRY when it accepts that Article 7(1)(c) pursues the aim, in the public interest, of not allowing the registration of descriptive signs or indications relating to characteristics of goods or services which should be freely available to all.
This spells bad news for those Community trade mark applications for borderline descriptive marks made in the wake of BABY-DRY, but good news for those who wish to be free from the risk of trade mark proceedings against their use of a mark which describes or relates to the characteristics of their goods or services.
Adidas has brought proceedings in the Netherlands against Fitnessworld in relation to its figurative Benelux trade mark forming a motif consisting of three vertical stripes of equal width, running parallel, which appear to the side and down the whole length of an article of clothing. The motif may be executed in different sizes and different colour combinations provided it always contrasts with the basic colour of the article of clothing. Fitnessworld markets fitness clothing under the name Perfetto. Adidas complained about those articles of clothing bearing a motif of two parallel stripes of equal width which contrast with the main colour and are applied to the side seams of the clothing. Adidas claimed among other things that the marketing of clothing with two stripes creates a likelihood of confusion on the part of the public, since the public might associate that clothing with Adidas’ clothing which bears three stripes. Fitnessworld was therefore taking advantage of the repute of the Adidas mark thereby impairing the exclusivity of that mark.
The questions referred to the ECJ by the Netherlands High Court related to Article 5(2) of the European Trade Mark Directive:
“Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”
ECJ Question 1
The first question for the ECJ was whether Article 5(2) of the Directive applied not only to goods or services which are not similar to those for which the trade mark is registered (as stated in Article 5(2)) but also to goods and services which are identical with or similar to those for which the trade mark is registered.
Following the date of the reference, the ECJ had already answered that question in the affirmative in Case C-292/00 Davidoff  ECR I-389. The United Kingdom government argued, however, that each Member State was free to adopt provisions restricted to the express wording of Article 5(2) of the Directive – that is to say to restrict the scope of the national implementation of Article 5(2) to goods or services which are not similar. This argument was rejected by the ECJ which ruled that each Member State, where it exercised the option to adopt Article 5(2), was bound to grant the specific protection to a registered mark with a reputation both in relation to goods and services which are not similar and in relation to goods and services which are identical with or similar to those covered by that mark.
ECJ Question 2
The second question had two parts. First, to benefit from the protection conferred by Article 5(2) is it necessary to establish that the degree of similarity between the mark with the reputation and the sign is such that there exists a likelihood of confusion between them on the part of the relevant section of the public?
On this question, the ECJ confirmed that Article 5(2) establishes a form of protection for the benefit of trade marks with a reputation whose implementation does not require the existence of a likelihood of confusion on the part of the public. As stated specifically in Article 5(2), it protects against use of the sign in question which without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. An infringement under Article 5(2) is the consequence of a certain degree of similarity between the mark and the sign “by virtue of which the relevant section of the public makes a connection between the sign and mark, that is to say, establishes a link between them even though it does not confuse them”. The ECJ referred in this context to Case C-375/97 General Motors  ECR I-5421. A likelihood of confusion is not required. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.
The second question was based on the hypothesis that the allegedly infringing sign was viewed purely as an embellishment by the relevant section of the public. In such a case, what importance should be attached to a finding of fact by the National Court that the sign in question is viewed purely as an embellishment by the relevant public when considering the similarity between the trade mark and the sign?
The ECJ concluded that the determination as to whether or not the sign was viewed as an embellishment by the relevant public was not determinative. Protection would be available under Article 5(2) where the sign was viewed as an embellishment provided that the degree of similarity between the mark and the sign was none the less such that the relevant section of the public establishes a link between the sign and the mark. However, if the National Court were to find both that the relevant section of the public viewed the sign purely as an embellishment and that it did not necessarily establish any link with the registered mark then protection would not be available under Article 5(2).
The Adidas decision confirms that the protection afforded to famous marks against dilution and tarnishment is available in all Member States which have implemented the provision both where the infringing sign is used on goods and services which are not similar to those for which the trade mark is registered (specified in Article 5(2)) and where it is used in relation to goods and services which are identical to or similar to those for which the trade mark is registered (not provided expressly in Article 5(2)). It also confirms that, under the famous marks regime it is not necessary to establish a likelihood of confusion on the part of the relevant section of the public. All that is required is that the relevant public establishes a link between the sign and the mark. In this respect, there is no special regime for signs which are viewed as embellishments by the relevant section of the public.
A version of this article (on the Doublemint case) was published in the December/January 2004 issue of Brand Strategy.