Whether to Cancel National Trademark Registrations in Favor of a CTM

OHIM v. Wm Wrigley Jr. Co., C-191/01 P

In OHIM v. Wm Wrigley Jr. Co., Wrigley applied to register a CTM for its famous DOUBLEMINT mark, for goods in Classes 3, 5, and 30. The CTM examiner refused the application on the ground that the word DOUBLEMINT was descriptive for very minty gum and absolutely unregisterable under the Community Trade Mark Regulation.

Article 7(1)(c) of the Community Trade Mark Regulation states:

The following shall not be registered:

Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

The CTM trademark office ruled that the mark DOUBLEMINT was descriptive of the goods, “namely, the mint-based composition and their mint flavour” and lacked the “fanciful or imaginative element” that is required by Article 7. The CTM examiner stated that because the term DOUBLEMINT was either descriptive of a product that had double the amount of mint or had two types of mint, it immediately indicated to consumers a characteristic of the goods.

The Court of First Instance overturned the ruling of the trademark office. It stated that because the mark had at least two meanings, consumers could not immediately know characteristics of the goods without further inquiry or inspection of the goods.

The European Court of Justice (“ECJ”) reversed the judgment of the Court of First Instance. The ECJ pointed out that the proper test under Article 7(1)(c) was to determine whether the mark had at least one meaning that could describe a characteristic of the goods or services, and whether other companies could use the mark to designate that characteristic in their own goods. Accordingly, the ECJ set aside the decision of the Court of First Instance and remanded it back to that court for a determination based upon the proper rule of law.

The Implications of this Decision

The decision of the ECJ may have little effect on the geographical scope of protection afforded to Wrigley's DOUBLEMINT mark. First, because Wrigley did not abandon all of its national registrations, Wrigley will likely retain its worldwide rights in the DOUBLEMINT mark, as the DOUBLEMINT mark is already protected in 14 of the 15 EU member states, as well as internationally. Additionally, Wrigley may still be able to obtain a CTM for its DOUBLEMINT mark claiming prior use and fame based upon Article 7(3) of the Regulations. Article 7(3) of the Regulations permits the registration of marks that have “become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.”

However, the EJC decision may have a significant effect on the practical scope of protection afforded the DOUBLEMINT mark. If the mark is found to be descriptive on remand, the DOUBLEMINT mark may find that it enjoys only a narrow scope of protection as against third-party marks, permitting third parties to use marks similar to the DOUBLEMINT mark without fear of being found liable for trademark infringement.

What does this decision mean for your client and its POWERSWEET mark? Based on this decision, there is some possibility the Community CTM office would not grant a registration to Copsi-Cola for the mark POWERSWEET, because there might be at least one descriptive interpretation of the mark, namely, a highly sweetened soda. Furthermore, unlike Wrigley's DOUBLEMINT mark, Copsi-Cola's POWERSWEET mark has only limited European use, and may not be able to take advantage of Article 7(3) of the regulations. Additionally, if a CTM examiner were to refuse registration based on descriptiveness, Copsi-Cola could irreparably damage its ability to enforce its mark as against similar marks. Accordingly, advising your client to abandon its national applications and registrations could be imprudent. A safer course of action would be to maintain the national applications and registrations while simultaneously filing a CTM application. Moreover, whereas the CTM rules are overly restrictive, selective national filing might be more prudent.

Copsi-Cola may still be able to obtain some of the advantages it sought through the CTM, namely, uniform rights in the mark and reduced costs, even if a CTM filing is not available. As a result of the recent accession of the United States to the Madrid Protocol, U.S. companies may now file for an International Registration under the Madrid Protocol. An International Registration permits U.S. trademark owners to file applications for registration in more than 58 countries worldwide, based upon one trademark filing with WIPO.

Some of the benefits that Copsi-Cola was seeking through a CTM registration would be available under the Madrid Protocol. Specifically, an International Registration would lower certain administrative fees for filing, maintaining and renewing registrations as compared to country-by-country filings. Copsi-Cola would also be able to extend the protection of its International Registration to most of the same countries that would be protected by a CTM registration. Additionally, Copsi-Cola would not have to face potential opposition to the registration of its CTM application based upon prior use in a country in which it never planned to use its mark.

While there are some drawbacks to the Madrid Protocol's International Registration, such as prosecution and enforcement on a country-by-country basis, and the absence of some European markets from the Madrid Protocol, an International Registration may in some circumstances, now be a more viable option for those wishing to seek protection for marks that may be deemed by the CTM office as descriptive or unregisterable for various reasons.

As can be seen, there are no simple answers as to abandoning national registrations to pursue CTMs or Madrid Protocol International Registrations. As a rule, however, decisions in this area require careful consideration.

Why maintain national trademark registrations in Europe? Your biggest client, the hypothetical Copsi-Cola, Inc., a U.S. beverage manufacturer, with a 95-year-old U.S. trademark registration for the popular POWERSWEET drink, a high-sugar soda, is attempting to expand its trademark rights in the European market and needs your advice. Copsi-Cola has also owned registrations in three of the 15 European Union (“EU”) member countries for more than 50 years: France, Spain and Portugal. Copsi-Cola has begun market research in advance of selling its POWERSWEET drink in five more EU member countries, including the United Kingdom, Germany and the Benelux countries, and has asked you to file applications in the national trademark offices in those countries. Copsi-Cola also wants the option of using its mark in all EU member countries.

After filing the applications, Copsi-Cola asks you if it would be better off abandoning its pending individual country applications, some of which it could not maintain because of lack of use, and file one community trademark (“CTM”) application. Among the benefits Copsi-Cola seeks is a uniform right in the mark throughout the EU based on use in only one country, which it can already establish. Copsi-Cola also has an interest in lowering the costs in applying for, renewing and maintaining its POWERSWEET and other registrations by having a single European registration. Copsi-Cola has indicated that it wants you to abandon its current European applications and registrations and file one CTM application. You realize that this decision requires careful consideration.

For example, what if the trademark laws have changed over time, such that your registered marks would no longer be registerable? What if the mark was challenged in a country with particularly narrow trademark rights? Would losing the mark throughout Europe justify the savings?

OHIM v. Wm Wrigley Jr. Co., C-191/01 P

In OHIM v. Wm Wrigley Jr. Co., Wrigley applied to register a CTM for its famous DOUBLEMINT mark, for goods in Classes 3, 5, and 30. The CTM examiner refused the application on the ground that the word DOUBLEMINT was descriptive for very minty gum and absolutely unregisterable under the Community Trade Mark Regulation.

Article 7(1)(c) of the Community Trade Mark Regulation states:

The following shall not be registered:

Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

The CTM trademark office ruled that the mark DOUBLEMINT was descriptive of the goods, “namely, the mint-based composition and their mint flavour” and lacked the “fanciful or imaginative element” that is required by Article 7. The CTM examiner stated that because the term DOUBLEMINT was either descriptive of a product that had double the amount of mint or had two types of mint, it immediately indicated to consumers a characteristic of the goods.

The Court of First Instance overturned the ruling of the trademark office. It stated that because the mark had at least two meanings, consumers could not immediately know characteristics of the goods without further inquiry or inspection of the goods.

The European Court of Justice (“ECJ”) reversed the judgment of the Court of First Instance. The ECJ pointed out that the proper test under Article 7(1)(c) was to determine whether the mark had at least one meaning that could describe a characteristic of the goods or services, and whether other companies could use the mark to designate that characteristic in their own goods. Accordingly, the ECJ set aside the decision of the Court of First Instance and remanded it back to that court for a determination based upon the proper rule of law.

The Implications of this Decision

The decision of the ECJ may have little effect on the geographical scope of protection afforded to Wrigley's DOUBLEMINT mark. First, because Wrigley did not abandon all of its national registrations, Wrigley will likely retain its worldwide rights in the DOUBLEMINT mark, as the DOUBLEMINT mark is already protected in 14 of the 15 EU member states, as well as internationally. Additionally, Wrigley may still be able to obtain a CTM for its DOUBLEMINT mark claiming prior use and fame based upon Article 7(3) of the Regulations. Article 7(3) of the Regulations permits the registration of marks that have “become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.”

However, the EJC decision may have a significant effect on the practical scope of protection afforded the DOUBLEMINT mark. If the mark is found to be descriptive on remand, the DOUBLEMINT mark may find that it enjoys only a narrow scope of protection as against third-party marks, permitting third parties to use marks similar to the DOUBLEMINT mark without fear of being found liable for trademark infringement.

What does this decision mean for your client and its POWERSWEET mark? Based on this decision, there is some possibility the Community CTM office would not grant a registration to Copsi-Cola for the mark POWERSWEET, because there might be at least one descriptive interpretation of the mark, namely, a highly sweetened soda. Furthermore, unlike Wrigley's DOUBLEMINT mark, Copsi-Cola's POWERSWEET mark has only limited European use, and may not be able to take advantage of Article 7(3) of the regulations. Additionally, if a CTM examiner were to refuse registration based on descriptiveness, Copsi-Cola could irreparably damage its ability to enforce its mark as against similar marks. Accordingly, advising your client to abandon its national applications and registrations could be imprudent. A safer course of action would be to maintain the national applications and registrations while simultaneously filing a CTM application. Moreover, whereas the CTM rules are overly restrictive, selective national filing might be more prudent.

Copsi-Cola may still be able to obtain some of the advantages it sought through the CTM, namely, uniform rights in the mark and reduced costs, even if a CTM filing is not available. As a result of the recent accession of the United States to the Madrid Protocol, U.S. companies may now file for an International Registration under the Madrid Protocol. An International Registration permits U.S. trademark owners to file applications for registration in more than 58 countries worldwide, based upon one trademark filing with WIPO.

Some of the benefits that Copsi-Cola was seeking through a CTM registration would be available under the Madrid Protocol. Specifically, an International Registration would lower certain administrative fees for filing, maintaining and renewing registrations as compared to country-by-country filings. Copsi-Cola would also be able to extend the protection of its International Registration to most of the same countries that would be protected by a CTM registration. Additionally, Copsi-Cola would not have to face potential opposition to the registration of its CTM application based upon prior use in a country in which it never planned to use its mark.

While there are some drawbacks to the Madrid Protocol's International Registration, such as prosecution and enforcement on a country-by-country basis, and the absence of some European markets from the Madrid Protocol, an International Registration may in some circumstances, now be a more viable option for those wishing to seek protection for marks that may be deemed by the CTM office as descriptive or unregisterable for various reasons.

As can be seen, there are no simple answers as to abandoning national registrations to pursue CTMs or Madrid Protocol International Registrations. As a rule, however, decisions in this area require careful consideration.