The Community Trade Mark (CTM) gives its owner a uniform right applicable in all EU Member States, through a single registration. The Office for Harmonisation in the Internal Market (OHIM), which regulates EU trade marks and designs, initially rejected Wrigley's application to register the word "Doublemint" as a CTM for its products.
The decision was based on the CTM Regulation, which provides that "trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose... or other characteristics of the goods or services" cannot be registered.
The OHIM claimed that Doublemint is the combination of two exclusively descriptive English words.
Wrigley, on the other hand, claimed that the OHIM decision was wrong, and that the word "Doublemint" is not exclusively descriptive, since it includes "expressive elements." The company took the case to the European Court of First Instance.
The court decided to grant the CTM, reasoning that the word has "an ambiguous and suggestive meaning" and, for that reason, it cannot be considered as descriptive of certain characteristics of a chewing gum.
"The term", the court said, "does not enable the public concerned immediately and without further reflection to detect the description of a characteristic of the goods in question."
The OHIM appealed the decision. In a hearing before the European Court of Justice last week, the OHIM reportedly claimed that an expression is descriptive not only where it is "factually descriptive", but also where it is "potentially descriptive in the mind of the consumer."
The decision in the Wrigley case is expected within the next three to six months. The UK and German trade mark offices have reportedly supported the OHIM's position in last week's hearing.
The European Court of Justice has, in 2001, ruled that Procter & Gamble's application for a trade mark on the word "Baby-Dry" for nappies was registrable, overruling an OHIM decision.
The court found that, due to the "syntactically unusual juxtaposition" of the two descriptive English words, the mark itself was not exclusively descriptive.