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DOUBLEMINT Decision Overturned By ECJ

DOUBLEMINT Decision Overturned By ECJ

12/11/03

The European Court of Justice (ECJ) has recently issued a decision concerning marks having various possible descriptive meanings.

The decision arose from an application to register the mark DOUBLEMINT in respect of a range of goods in Classes 3, 5 and 30 including chewing gum. The Examiner had initially refused the application on the grounds that the mark applied for was purely descriptive.

On appeal the applicant argued that the mark when taken in its entirety was a new word and that consumers would not understand the words DOUBLE and MINT as each having one single meaning, but rather would have to take several mental steps in order to reach a final understanding of their meaning.

This argument was rejected by the Board of Appeal and so a further appeal was lodged this time with the Court of First Instance (CFI).

The CFI found in favour of the applicant and determined that the Board of Appeal was wrong in regarding the term DOUBLEMINT as exclusively descriptive of the goods in question. In their decision, the CFI referred to a number of different meanings for the expression DOUBLEMINT and took the view that this deprived the sign of any descriptive function for the purposes of Article 7(1)(c). The CFI stated that the term DOUBLEMINT did not enable the relevant public, immediately and without further reflection, to detect the description of a characteristic of the goods in question.

However, the matter did not end there as the decision of the CFI was the subject of a final appeal to the ECJ. The ECJ has decided to overturn the decision of the CFI determining that the mark should be considered descriptive and objectionable under the Regulation if at least one of its possible meanings designates a characteristic of the goods or services concerned. The test applied by the CFI based on whether the mark is executively descriptive was therefore considered incorrect by the ECJ.

This decision thus confirms that the correct test under Article 7(1)(c) of the Community Trade Mark Regulation is whether the mark is capable of being used by other undertakings to designate a characteristic of the goods or services irrespective of whether the mark might be capable of having several meanings.