Out-Law / Your Daily Need-To-Know

Setback for Wrigley's Doublemint trade mark

Out-Law News | 15 Apr 2003 | 12:00 am | 1 min. read

The European Court of Justice's Advocate General has delivered an opinion in a case over gum maker Wm Wrigley Jr. Company's attempt to register its Doublemint trade mark across the EU, a decision which could restrict the ability of brand owners to register descriptive marks.

Advocate General Francis Jacobs wrote that the word combination Doublemint merely describes the product's characteristics. He wrote that the term "is a factual, objective reference to mint flavour in some way doubled". An "imaginative element" was found to be lacking from the mark.

The opinion is not the end of the matter: the European Court of Justice must make its final decision later this year, although it will be influenced by the Advocate General's views.

Jacobs contrasted his decision with a previous one that granted a trade mark to Proctor & Gamble for Baby-Dry. The difference, he said, was that term's "syntactically unusual juxtaposition." The inversion of the words Baby and Dry would be unusual to English speakers; not so Double and Mint, he reasoned.

Jacobs wrote: "The placing of a qualifier such as 'double' before a characteristic such as 'mint' is not structurally or syntactically unusual."

He added that, "whilst Doublemint as such may be absent from dictionaries, the degree of lexical invention deployed in its creation is essentially limited to removing the space between two words which may well be used together descriptively."

The mark is already registered in the US, where the product has been sold since 1914. It is also registered in 14 of the EU's 15 Member States but, according to SFGate.com, Wrigley wants a Community Trade Mark registration to reduce administrative costs and improve protection.