Double Your Pleasure: “Doublemint” Mark Refused CTM Registration

In a case relating to the test to be applied in deciding whether a work mark is capable of distinguishing the goods of one from another, the European Court of Justice (ECJ) reversed the lower court ruling that mark "Doublemint" was not registrable for chewing gum in the European Union (EU) absent evidence of distinctiveness. OHIM v. Wm Wrigley Company (DOUBLEMINT), ECJ Case C-191/01P.

Under Community Trade Marks (CTM) practice marks, which "consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity intended purpose, value … or other characteristics of the goods or services" (emphasis added) are not registrable.

The question before the ECJ involved the correct test to apply to determine if the mark "Doublemint" for chewing gum was capable of distinguishing the gum of one maker from those of another. The correct test was held to be that the mark must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.

In this case, Doublemint was found to be two conjoined English words. It might have a primary use when used by other traders to designate a characteristic of their gum, i.e., has the taste of double mint, and it had to be kept free of that purpose. There was no evidence of record that the mark had, in fact, become distinctive of Wrigley’s gum. The case was remanded by the ECJ to the European Court of First instance (CFI) to review the facts of the basis of the ECJ’s guidance as to the law.

Practice Note: If a word mark is semi-descriptive of the character of some other attribute of the goods, the National Route for registration may be better than the CTM route, as the mark in at least some countries may get through to registration even where the language does not convey a utility for the product. Also, the best evidence of distinctiveness in fact should be made part of the record. Where possible, evidence that the mark does not convey any features of the goods to a native speaker of the language of the mark should be presented, recognizing the difficulty of proving a negative. Note that the ECJ did not hold that "Doublemint" was unregistered for chewing gum, only that the CFI applied the wrong legal test.