BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | ||
Court of Justice of the European Communities (including Court of First Instance Decisions) |
||
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> OHMI v Wrigley (Intellectual property) [2003] EUECJ C-191/01P (23 October 2003) URL: http://www.bailii.org/eu/cases/EUECJ/2003/C19101P.html Cite as: [2004] RPC 18, ECLI:EU:C:2003:579, EU:C:2003:579, [2003] ECR I-12447, [2004] 1 WLR 1728, [2003] EUECJ C-191/1P, [2003] EUECJ C-191/01P |
[New search] [Buy ICLR report: [2004] 1 WLR 1728] [Help]
JUDGMENT OF THE COURT
23 October 2003 (1)
(Appeal - Community trade mark - Regulation (EC) No 40/94 - Absolute ground for refusal to register - Distinctive character - Marks consisting exclusively of descriptive signs or indications - DOUBLEMINT)
In Case C-191/01 P,
Office for Harmonisation in the Internal Market (Trade Marks and Designs), represented by V. Melgar and S. Laitinen, acting as Agents, with an address for service in Luxembourg,
appellant,
supported by
Federal Republic of Germany, represented by A. Dittrich and B. Muttelsee-Schön, acting as Agents, with an address for service in Luxembourg,
and by
United Kingdom of Great Britain and Northern Ireland, represented by J.E. Collins, acting as Agent, assisted by D. Alexander, Barrister, with an address for service in Luxembourg,
interveners in the appeal,
APPEAL against the judgment of the Court of First Instance of the European Communities (Second Chamber) of 31 January 2001 in Case T-193/99 Wrigley v OHIM (DOUBLEMINT) [2001] ECR II-417, seeking to have that judgment set aside, in which the Court of First Instance annulled the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 16 June 1999 (Case R 216/1998-1) dismissing the appeal brought by Wm. Wrigley Jr. Company against the refusal to register the word DOUBLEMINT as a Community trade mark,
the other party to the proceedings being:
Wm. Wrigley Jr. Company, established in Chicago, Illinois (United States of America), represented by M. Kinkeldey, Rechtsanwalt, with an address for service in Luxembourg,
applicant at first instance,
THE COURT,
composed of: V. Skouris, President, P. Jann, C.W.A. Timmermans, C. Gulmann, J.N. Cunha Rodrigues and A. Rosas (Presidents of Chambers), D.A.O. Edward, A. La Pergola, J.-P. Puissochet (Rapporteur), R. Schintgen, F. Macken, N. Colneric and S. von Bahr, Judges,
Advocate General: F.G. Jacobs,
Registrar: H. von Holstein, Deputy Registrar,
having regard to the Report for the Hearing,
after hearing oral argument from the parties at the hearing on 21 January 2003, at which the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) was represented by A. von Mühlendahl, acting as Agent, and V. Melgar, and Wm. Wrigley Jr. Company by M. Kinkeldey,
after hearing the Opinion of the Advocate General at the sitting on 10 April 2003,
gives the following
Regulation (EC) No 40/94
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 undertakings.
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
(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;
...
2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has 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.
A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
...
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
...
provided he uses them in accordance with honest practices in industrial or commercial matters.
Facts of the case
Procedure before the Court of First Instance and the contested judgment
The appeal
Arguments of the parties
Findings of the Court
40. In the present proceedings, the case must be referred back to the Court of First Instance and costs must be reserved.
On those grounds,
THE COURT,
hereby:
1. Sets aside the judgment of the Court of First Instance of the European Communities of 31 January 2001 in Case T-193/99 Wrigley v OHIM (DOUBLEMINT);
2. Refers the case back to the Court of First Instance;
3. Reserves the costs.
Jann
Cunha Rodrigues
La Pergola
Macken
|
Delivered in open court in Luxembourg on 23 October 2003.
R. Grass V. Skouris
Registrar President
1: Language of the case: English.