C-191/01

O H I M v WRIGLĽY

O P I N I O N O F ADVOCATE GENERAL JACOBS delivered on 10 April 2003 1

1. Following its judgment in the Baby-Dry Relevant legislation 5 case, 2the Court is again asked to rule on appeal 3 on the correct interpretation of Article 7(1)(c) of the Community Trade Mark Regulation. 4Under that provision, a 3. Article 4 of the Community Trade Mark brand name consisting exclusively of signs Regulation provides as follows: or indications which may serve in trade to designate characteristics of the product concerned may not be registered as a Community trade mark. 'A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertak­ ings.'

2. Specifically, it must be decided whether the name 'Doublemint', used of chewing 4. Article 7 provides: gum, falls within that category. In con­ sidering that question the Court has an opportunity to clarify, refine and develop the indications it gave on the interpretation of that provision in Baby-Dry. Such an opportunity is perhaps all the more wel­ '1. The following shall not be registered: come since, in my view, the effect of that judgment has been widely misunderstood.

1 — Original language: English (a) signs which do not conform to the 2 — Judgment of 20 September 2001 in Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251 requirements of Article 4; 3 — Against the judgment of 31 January 2001 in Case T-193/99 Wm Wngley Ir Company v OHIM (Dtmblemmt) [2001] ECR II-417 (tne 'judgment under appeal'). 4 — Council Regulation (EC) N o 40/94 of 20 December 1993 on 5 — Sec also paragraphs 4 to 15 of my Opinion in Baby-Dry for the Community trade mark, OJ 1994 L 11, p. 1. a slightly fuller account of the context of these provisions.

6. On 29 March 1996 Wm Wrigley Jr Company ('Wrigley') applied to the Office for Harmonisation in the Internal Market 'A Community trade mark shall not entitle (Trade Marks and Designs) ('the Office') the proprietor to prohibit a third party for registration of the word 'Doublemint' from using in the course of trade: as a Community trade mark for goods, in

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OHIM v WRIGLEY

particular chewing gum, in several classes association of two kinds of mint, pepper- of the Nice Agreement. 6 mint and spearmint, which in itself is a special flavour. The trade mark is descrip- tive for goods likely to be capable of having a doublemint flavour'.

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expression 'doublemint' on a packet of mint, peppermint and other culinary herbs; chewing gum or in an advertisement for there were therefore several ways of com- chewing gum would assume that the prod- bining two sorts of mint, and various uct contained a great deal of mint or the strengths of flavour were possible for each flavour of mint. combination. 9

13. The numerous meanings of 'Double- mint' were immediately apparent, at least 11. On 1 September 1999 Wrigley by association or allusion, to an average appealed to the Court of First Instance. In English-speaking consumer, depriving it of the judgment under appeal, that Court any descriptive function for the purposes of noted that Article 7(1)(c) of Regulation Article 7(1 )(c) of the Trade Mark Regu- No 40/94 precludes the registration of signs lation, whereas for a consumer with insuf- which, by reason of their purely descriptive ficient knowledge of English the term nature, are incapable of distinguishing the would have a vague and fanciful mean- goods of one undertaking from those of ing. 10 another. By contrast, signs or indications whose meaning goes beyond the merely descriptive are capable of being registered as Community trade marks. 8

15. Two previous decisions of the Court of 17. At paragraph 25 of its judgment, the Justice are of particular relevance in the Court stated that 'Article 3(1)(c) of the present case: Windsurfing Chiemsee 13 and Directive pursues an aim which is in the Baby-Dry. 14 public interest, namely that descriptive signs or indications relating to the cat- egories of goods or services in respect of which registration is applied for may be freely used by all, including as collective marks or as part of complex or graphic marks.' In paragraphs 29 to 35 however it concluded that the aim was broader than that of Freihaltebedürfnis in German law; application of Article 3(1)(c) does not depend on there being a real, current or 16. Windsurfing Chiemsee concerned serious need to leave a sign or indication Article 3(1 )(c) of the Trade Marks Direc- free but rather on whether that sign or tive, 15 which is identical in wording to indication 'may serve in trade' to designate Article 7(1 )(c) of the Regulation but which (in that case) geographical origin. applies to national and not Community trade marks. One of the questions raised was whether the term 'Chiemsee', the name of a Bavarian lake, could be registered as a trade mark in relation to sportswear sold locally or whether, since it was a term of geographical origin, it was precluded from registration by Article 3(1)(c), in particular 18. In Baby-Dry, the interpretation of in the light of the German-law concept of Article 7(1 )(c) of the Regulation was in Freihaltebedürfnis (literally, the need to issue in the context of a mark having keep free), under which registration must features in some ways comparable to those be refused only if there is a real, current or of 'Doublemint'. Following a refusal of registration as a Community trade mark, the Court of First Instance essentially con- 13 —Joined Cases C-108/97 and C-109/97 Windsurfing Chiem- see [1999] ECR I-2779. firmed the Board of Appeal's view that 14 — Cited above in note 2. See also the Opinions of Advocate since the words 'baby' and 'dry' can both General Ruiz-Jarabo in Case C-363/99 Koninklijke KPN Nederland ('Postkantoor'), still awaiting judgment, and be used to describe characteristics of Case C-104/00 P DKV Deutsche Krankenversicherung v OHIM [2002] ECR I-7561 ('Companyline'), referred to in babies' nappies, a mark consisting of paragraph 74 below. nothing other than those words cannot, 15 — First Council Directive 89/104/EEC of 21 December 1988 by virtue of Article 7(1)(c), be registered for to approximate the laws of the Member States relating to trade marks, OJ 1989 L 40, p. 1. such goods.

20. In its judgment the Court stated that the purpose of Article 7(1)(c) was to prevent registration of signs or indications which, being no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the under- 22. Since a combination of words cannot taking that markets them. 18 Such signs and be registered as a Community trade mark if indications were those which may serve in it is purely descriptive in one of the normal usage from a consumer's point of languages used in trade within the Com- view to designate those goods or services, munity, the question was whether from the directly or by reference to an essential point of view of an English-speaking con- characteristic. A mark composed of such sumer a combination such as 'Baby-Dry' signs or indications should not be refused if could be viewed as a normal way of referring to the goods or representing their

16 — Paragraphs 75 to 81. 17 — Paragraphs 82 to 97. 19 — Paragraph 39. 18 — Paragraph 37. 20 — Paragraph 40.

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OHIM v WRIGLEY

essential characteristics in common par- also rejects the suggestion that Article 12(b) lance. Whilst each of the two words might is sufficient to protect fair use of descriptive form part of expressions used in everyday terms where related terms are registered as speech to designate the function of babies' trade marks; it is therefore necessary to nappies, their syntactically unusual juxta- screen out such marks at the registration position was not a familiar expression in stage. English, either for designating nappies or for describing their essential characteristics. The Court of First Instance had thus erred in law and both its judgment and the Board of Appeal's decision were annulled. 21

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OHIM v WUIGLEY

applies only where there is a reasonably with regard to German-speaking con- clear and foreseeable need for competitors sumers, who would be likely to assimilate to use the exact term to describe features of 'Doublemint' to its German equivalent their products. In nearly a century since 'Doppelminze' - making only the objective 'Doublemint' was first registered as a trade statement that the products either have a mark in the United States, including many double (especially strong) mint flavour or years of registration in the Community, no contain two different varieties of mint, and competitor has sought to use the word thus immediately describing their material descriptively - a good indication that the composition. The term is in fact used in term is not solely descriptive and does not trade, with those meanings, to describe a need to be kept in the public domain. variety of goods. The fact that there may be hesitation as to which of the two meanings is intended is irrelevant, since both describe characteristics of the goods.

Assessment

35. The judgment under appeal misinter- 37. At one level, the course to be taken preted the Trade Mark Regulation in four with regard to this appeal seems rather ways: (i) the test of whether the term obvious. As has been pointed out in enables the public concerned immediately particular by the Office and the United and without further reflection to detect the Kingdom G o v e r n m e n t , there are t w o description of a characteristic of the goods a p p a r e n t flaws in the Court of First in question is not in the Regulation and is Instance's reasoning which make it difficult excessively restrictive; (ii) the concept of to uphold the judgment under appeal. 2 2 'unusual' should not have been used in relation to the adjective 'double' - the test in the Regulation is whether the sign is descriptive in normal use by the average consumer; (iii) ambiguity is not in itself sufficient - a term does not cease to be descriptive because it has more than one 38. First, in paragraphs 31 and 32 of the meaning; (iv) the Regulation does not judgment, that Court states that the con- require that the sign in question be exclus- tested decision must be annulled because ively descriptive - 'exclusively' qualifies the term 'Doublemint' 'cannot be char- 'consists of', and a sign which has a a c t e r i s e d as exclusively d e s c r i p t i v e ' , descriptive dimension, even if it is not whereas the criterion in Article 7(1)(c) is exclusively descriptive, must be refused that trade marks may not be registered registration. which 'consist exclusively of signs or indi- cations which may serve, in trade, to designate... characteristics of the goods or service' concerned.

39. The word 'exclusively' in that provision and without further reflection to detect a qualifies the verb 'consist'; it refers to the description of characteristics of the relevant elements of which the mark is composed goods. and not to their capacity to designate characteristics. In order for registration to be precluded under Article 7(1)(c) of the Trade Mark Regulation, all the elements must have such a descriptive capacity; it is not necessary on the other hand that they 42. Therein lies the second and more can have no other, non-descriptive, mean- serious flaw in the judgment under appeal. ing. A decision on registrability which is The fact that 'double' and 'mint' in com- based on the latter criterion in the context bination give rise to a multiplicity of poss- of Article 7(1)(c) is prima facie wrong in ible meanings - are ambiguous or sugges- law. tive - does not necessarily deprive that combination of its capacity to serve in trade to designate characteristics of a product (such as chewing gum).

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too may lack precision without conferring tions' automatically makes it impossible for some different n a t u r e on the w h o l e any (compound) term to designate a char- expression. If, for example, a consumer acteristic of the product(s) in respect of remains unsure whether a 'double' liqueur which registration is sought. That assump- chocolate contains two different types of tion is an interpretation of the legal rule in liqueur (and/or chocolate) or twice as much Article 7(1)(c) of the Trade Mark Regu- liqueur (and/or chocolate) as some other lation. It is in my view clearly wrong as a unspecified standard, he is none the less general proposition. practically certain to apprehend that a characteristic of the product (its liqueur or chocolate ingredient) is being designated as in some way doubled or duplicated, even if not literally or precisely so. The term in question may thus serve in trade to desig- nate such a characteristic. 47. It may be noted that the Court of First Instance itself has considered it to be wrong in its judgment in Truckcard, 23 in which it stated that '... in order to come within Article 7(1)(c) of Regulation N o 40/94, it is sufficient that at least one of the possible meanings of a word sign identifies a feature of the goods or services concerned'. Fur- thermore, the number of semantic com- binations referred to by the Court of First Instance in the present case is limited and 45. The question whether any particular none of them is obscure as a designation of expression may serve in trade to designate a a characteristic of chewing gum. characteristic of any particular product is one of fact and this Court is not competent to quash a judgment of the Court of First Instance on a point of fact. There may moreover be cases in which the number of meanings which may be ascribed to a compound term is particularly vast, and 48. The judgment under appeal may there- the only one capable of designating product fore be quashed on that ground. characteristics is particularly obscure and thus unlikely to be used.

The contours of 'descriptiveness' 53. It is true that a term which may serve in trade to designate product characteristics will almost certainly be devoid of distinc- tive character. I none the less still consider it preferable, in the legislative context of the Community Trade Mark Regulation, 50. The term 'descriptiveness' is commonly neither to conflate the two criteria nor to used for the capacity of terms to designate view them as inherently interdependent. product characteristics in trade, in the context of Article 7(1)(c) of the Trade Mark Regulation. It is a convenient short- hand for that notion, although it is perhaps preferable to keep the substance of the exact criterion in mind, as I shall endeavour to do. 54. I shall not pursue the point, since in the present case there has been no question of refusing registration of 'Doublemint' on the basis of a lack of the distinctive character with which Article 7(1)(b) is concerned.

51. In my Opinion in Baby-Dry,24 I took the view that Article 7(1)(c) of the Trade Mark Regulation, which precludes regis- 55. Wrigley has, it is true, asserted that tration of signs consisting solely of elements consumers in fact perceive the term as which may be used in trade to designate identifying a brand of chewing gum, not as products or their characteristics, should be describing its flavour. However, that argu- viewed independently of Article 7(1)(b), which precludes registration of signs lack- ing any distinctive character. 25 — See, for example, Case T-345/99 Harbinger Corporation v OHIM (Trustedlmk) [2000] ECR II-3525, paragraph 31 of the judgment, and Case T-34/00 Eurocool Logistik v OHIM (Eurocool) [2002] ECR II-683, at paragraph 25. See also the Opinion of Advocate General Ruiz-Jarabo in 24 — At paragraphs 61 to 74. Postkantoor, cited above in note 14, at paragraph 40.

56. A more relevant question in the present 60. Next, if one looks at the case-law of the proceedings is whether, as Wrigley con- Court of First Instance and the decisions of tends, the admittedly imprecise semantic the Boards of Appeal - and indeed at the content of 'Doublemint' might take it out case-law of many national courts - it of the realm of the descriptive (that is to becomes apparent that the criteria which say, of Article 7(1)(c)) and into the realm of have regularly been applied, although the merely allusive or suggestive. expressed in various forms of words, fall within a number of consistent categories. In what follows I do not seek to innovate, or to improve on those criteria, but rather to suggest a framework within which they may be placed with a view to facilitating the assessment. 57. There is clearly a line to be drawn between terms which may be used to designate products or their characteristics and those which are merely suggestive of such characteristics. The latter may be registered and are obviously of great value 61. It seems obvious that there is no clear- to the trade mark owner. cut distinction between indications which designate a characteristic and those which merely allude suggestively to it. There is no precise point at which a term suddenly switches from one category to the other, but rather a sliding scale between two extremes and an element of subjective 58.. Exactly where that line is to be drawn judgment will often be required in order is however less clear. In each case, there to determine to which extreme a term is

62. The first point of view concerns the way in which a term relates to a product or- one of its characteristics. The more factual and objective that relationship, the more likely it is that the term may be used as a designation in trade, so that registration will be precluded by Article 7(1 )(c); con- 65. I would stress however that the ques- versely, the more imaginative and subjec- tion of precision, accuracy or factual cor- tive the relationship the more acceptable rectness is not normally relevant to the the term will be for registration. examination from any of those points of view. As I have stated above, practically any designation of a product characteristic can be rendered more precise, and it is obvious that descriptions used in trade may be untruthful whilst still serving to desig- nate product characteristics - indeed, it is 63. The second point of view concerns the for that very reason that misleading way in which a term is perceived: how descriptions are generally prohibited. immediately is the message conveyed? The more ordinary, definite and down-to-earth a term is, the more readily a consumer will apprehend any designation of a character- istic and the more likely the term thus is not to qualify for registration as a trade mark. Where at the other extreme the skills of a cryptic-crossword enthusiast are needed in order to detect any connection with the designated characteristic, the grounds for refusing registration are very weak indeed. 66. Once a proposed trade mark has been assessed separately from each of the three proposed points of view, a final decision must be taken. It is impossible to lay down absolute rules, but in general it would seem plausible that a mark should be refused registration under Article 7(1 )(c) if, overall, 64. The third point of view concerns the it appears to be nearer the 'non-registrable' significance of the characteristic in relation end of the scale taking the three points of

68. Wrigley has further argued both at first instance and on appeal that, while both 'double' and 'mint' may be used to desig- nate characteristics of chewing gum, the compound 'Doublemint' consists of more 70. In the case of 'Doublemint' those than just those elements. It stresses that the features are in my view very considerably less marked than in that of 'Baby-Dry'. 26 — Such an approach must of course be tempered with common sense. For example, for chewing gum sold in strips, 'Two-Inch' might be a purely factual and readily 27 — See the judgment in Baby-Dry, at paragraph 44. understandable reference to the length of the strip, but that characteristic might be so peripheral as to override a high 28 — See the Opinion in Baby-Dry, at paragraph 90. score on the first two scales. 29 — See the judgment in Baby-Dry, at paragraph 43.

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71. To an English-speaker, the most strik­ tially limited to removing the space ing feature of 'Baby-Dry' is its inversion of between two words which may well be usual word order 30 in such a way as to used together descriptively. require its being placed in a longer phrase in order to acquire complete and immediate grammatical sense, only the longer phrase being suitable to designate a product such as nappies or a characteristic thereof.

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itself is more important than the sum of the clearly be contrary to the legislative inten- terms of which it is composed. As regards tion of Article 7(1)(c) of the Trade Mark meaning, a difference will be perceptible Regulation. provided that whatever is evoked by the composite sign is not identical to the sum of that which is suggested by the descriptive components.' 33

33 — Opinion in Postkantoor, at paragraph 70, referring to art 3(1)(c) of the Trade Marks Directive. 35 — Since it would seem appropriate to view a term 'which may 34 — Case C-291/00 LTJ Diffusion [2003] ECR I-2799. be used in trade' also from the trader's point of view.

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Dry' form a significant addition to the well not appear unusual to a speaker of a lexical terms used in its composition, Romance language, so that for such a whereas those of 'Doublemint' do not. consumer that feature would not constitute The former is not, in the form in which an additional element over and above the registration was sought, suitable in the descriptive terms used. Under Article 7(2) ordinary language of trade to designate of the Trade Mark Regulation an appli­ the nature or characteristics of nappies, cation must be refused even if the grounds whereas the latter perceptibly lends itself to of non-registrability obtain in only part of the designation of characteristics of mint- the Community. Thus - presumably - a flavoured or mint-scented products. sign should be assessed in the light of the perception of consumers in all Member States.

The 'shoes of an English-speaking con­ sumer'

81. In a slightly different vein, the German Government has submitted in the present appeal that consideration should be given 79. At paragraph 42 of the judgment in to the effect of 'Doublemint' on a German- Baby-Dry, the Court stated that, in order to speaking consumer, who would be likely to assess that word combination, it was assimilate it to the German coinage 'Dop­ necessary to put oneself 'in the shoes of pelminze' and thus to view it as descriptive. an English-speaking consumer'. I have taken the same approach above in con­ sidering 'Doublemint' - as did the Court of First Instance in the judgment under appeal.

83. First of all, it is clear that when an through the eyes (or ears) of a Community application is made to register a trade mark consumer whose language is different. which consists of terms drawn from a language used in trade in the Community, the first stage of the assessment under Article 7(1)(c) must be from the standpoint of a native speaker of the language con- cerned. If at that stage it is clear that the terms may be used in trade to designate characteristics of the relevant products, it is unnecessary to consider the position of speakers of other languages. 37 86. For example, the English word 'handy', meaning easy to handle, might be seen as a possible word mark, or part of a mark, for a mobile phone. Since however that word is commonly used in Germany to designate a mobile phone, it could not be registered as a Community mark. Similarly, a term derived from one language may acquire a 84. In both Baby-Dry and Doublemint, the different meaning or connotation in Office (both the examiner and the Board of another: the English word 'smoking' does Appeal) reached a decision on the basis of not in English designate any characteristic the English language. In neither case did the of formal evening dress for men, whereas in Court of First Instance consider - nor was it French, German or Italian it designates asked to consider - the situation from the what would in English be known as a point of view of a speaker of any other dinner jacket or (by those who refer to language. In such circumstances, it does not nappies as 'diapers') a tuxedo. appear appropriate for the Court of Justice on appeal to embark on an examination from such a point of view. Where relevant, it will be for the Office to do so when the case is remitted to it.

89. Regardless of how Italian-speakers may perceive the brand name 'Baby-Dry', for example, the range of Italian terms with 91. That last consideration leads me to the which Italian purveyors of nappies may question of the extent to which describe their goods is no more diminished Article 7(1)(c) of the Trade Mark Regu- by it than the range at the disposal of lation must be interpreted in the light of the British or Irish nappy-makers would be by aim referred to in the Windsurfing Chiem- a brand name as purely descriptive (in see judgment, namely that descriptive signs Italian) as 'Pannolino'. That is indeed why, and indications should be freely available as the agent for the Office pointed out at to be used by all traders in relation to the the hearing, many national trade mark relevant goods. offices take no account of the meaning of words from a foreign language when assessing an application for a national trade mark.

92. In my Opinion in Baby-Dry, 39 I took the approach that in the scheme of the Community Trade Mark Regulation a trade mark could include signs or indi- 90. Assessment under Article 7(1)(c) cations designating product characteristics should thus not be based on the question but could not consist exclusively of them. whether a term in a language used in one By virtue of Article 12(b), the trade mark part of the Community 38 might in another cannot prevent other traders from using part of the Community be thought to such signs for descriptive purposes. The designate product characteristics, so that aim of Article 7(1)(c) is to avoid the any innovative or unusual feature in the registration of descriptive brand names for

93. In the present case, both the Office and the United Kingdom Government have expressed reservations a b o u t that approach, which has also been criticised in the literature. 40 It appears, they have 95. That danger cannot be ignored. A trade pointed out, to represent a departure from mark owner wishing to monopolise not the Court's statement in Windsurfing only his trade mark but the area around it Chiemsee that Article 3(1 )(c) of the Trade may threaten unmeritorious proceedings Marks Directive 'pursues an aim which is against a competitor, who may capitulate in the public interest, namely that descrip- rather than incur the costs of litigation as tive signs or indications relating to the well as risk an adverse outcome. categories of goods or services in respect of which registration is applied for may be freely used by all' and that Article 6(1)(b) (which corresponds to Article 12(b) of the Regulation) does not have a decisive bear- ing on that interpretation.

96. However, for the reasons already given, I do not think that the Baby-Dry case, properly understood, does shift the balance 94. It may be feared that the approach in in the way that has been suggested. And the question is liable to shift the balance of danger mentioned will be obviated if the power in favour of a trade mark owner criterion of 'perceptible difference' in para- with monopolistic ambitions who may graph 40 of the Baby-Dry judgment is assert, or threaten to assert, his rights applied as I have suggested above, so that a mark is accepted for registration only when it is apparent to both traders and con- 40 — See, for example, Tim Pfeiffer, Descriptive trade marks - sumers that as a whole it is not suitable, in The impact of the Baby-Dry case considered [20021 E.I.P.R. 373. the ordinary language of trade, as a desig- I - 12470

98. I turn finally to two arguments raised by Wrigley at first instance, which may be 100. In that regard, I note that all of the dealt with succinctly: the existence of registrations adduced were granted either for figurative marks (containing elements in addition to the term 'Doublemint') or (at 41 — Moreover, it should be borne in mind that a trade mark least originally) under national legislation including elements which may be used in trade to designate product characteristics is excluded from registration bv not subject to harmonisation by the Trade Article 7(1)(c) only if it consists exclusively of such elements. The Office has registered a number of word Marks Directive (and thus not providing marks including the term 'mint' for products in Class 30, evidence that the criteria in Article 7(1)(c) where it must be clear that the term refers to a char- acteristic of the product. It has also registered, as figurative of the Trade Mark Regulation were met). marks, 'Wrigley's Spearmint Chewing Gum' and indeed 'Wrigley's Doublemint Chewing Gum'. In all those cases additional verbal and/or other elements are present, so that registration is possible. The presence of those additional elements and the fact that terms such as 'mint', 'spearmint' and 'chewing gum' are clearly suitable to designate product characteristics, so that any descriptive use by competitors will just as clearly be covered by Article 12(b), make it considerably less likely that the trade mark owner will indulge in intimidation of the kind described or that a competitor will capitulate in the face of such tactics. 42 — Judgment of 8 April 2003 in Joined Cases C-53/01 to C- 55/01 Linde and Others, ECR I-3161, especially at paragraphs 73 and 74 of the judgment and point 2 of the 101. Since moreover it is clear that the operative part. Board of Appeal did consider Wrigley's

(2) dismiss the application in that case; and

(3) order W m Wrigley Jr Company to pay the costs at first instance and on appeal.

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