Writing in the November issue of the newsletter of the Multinational Litigation Committee, Christopher Scott D'Angela and Tricia J. Sadd of Montgomery, McCracken, Walker & Rhoads, Philadelphia, tell about the EC's definition of "descriptive":
The European Community recently and dramatically expanded the definition of the term "descriptive," as it is used by trademark examiners use to evaluate trademark applications, greatly limiting the ability to register words or word phrases as trademarks. This development occurred in a case involving the Wm. Wrigley Jr. Co.'s application to register the mark Doublemint.
Under principles of trademark law, a trademark must adequately identify the source of the goods and not merely describe them. This rule of law is based on the equitable sense that there are a limited number of terms to describe a good appropriately and that all producers should have equal access to the terms that describe their products. Imagine the hardship imposed on an apple producer who could not use the word Apple in the course of business. Thus, Apple serves as a fine source-identifying mark for computers, but it would not for a bushel of apples.
Descriptions are out
The EC adopted this principle of law, which also is codified in the United States under the Lanham Act (15 U.S.C. § 1052), in Regulation No. 40/94, Article 7(1 )(c) of which provides:
1. The following shall not be registered: ...
(c) 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.
Thus, trademark examiners in the EC deny applications for marks that they find descriptive.
In the Wrigley case, the Office for Harmonisation in the Internal Marks, Trade Marks and Designs (OHIM), the EC's trademark office, denied Wrigley's application to register the mark Doublemint because the OHIM found it to be descriptive. After making its way though the EC's appellate structure, the Court of justice of the European Communities, the highest court in the EC, heard the case. Although the court did not determine whether Doublemint is a descriptive mark for chewing gum, it did change the analysis required to determine whether a mark is descriptive under Regulation 40/94, Article 7(l)(c).
In Office for Harmonisation in the Internal Market (Trade Marks and Designs) v. Wm. Wrigley Jr. Co., case No. C191/01P), decided October 23, 2003, the court wrought a change that will make it more difficult, if not unlikely, that Wrigley will be able to register Doublemint and which will have a major impact on the ability of others to register marks.
EC precedent: Baby-Dry
Prior to Wrigley, Procter & Gamble Co. v. OHIM, known as the "Baby-Dry" case, an action involving the mark Baby-Dry for diapers, stood as the leading EC precedent on the meaning of "descriptive" as used in Article 7(l)(c). In that case, the Court of justice overturned an administrative board's decision that Baby-Dry was descriptive. The court noted that Article 7(1 )(c) excludes only words "which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought" from being registered marks.
Thus, the test for registrability is "whether the [word or] word combination in question may be viewed as a normal way of referring the goods or of representing their essential characteristics in common parlance. …