Yesterday'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.