October 2003
Doublemint and Triple Stripes: Developments in the Community Trademark
The European Court of Justice has set out two judgments clarifying what words and images may be protected as Community Trademarks.
In a case involving chewing gum manufacturer Wrigleys, the court rejected the application by Wrigleys to register the word "Doublemint". The proposed mark would be used for Wrigleys' mint flavoured chewing gum and the court held that it should not be registered on the basis that describes the product. Although the word may be capable of other meanings, such meanings could only ultimately describe the chewing gum's minty quality.
The other case involved Adidas and a Dutch producer of sportswear, Fitnessworld. Adidas argued that Fitnessworld's use of two stripes on its clothing would lead customers to confuse Fitnessworld's product with that of Adidas who are known for their three striped design. Adidas were concerned that the public confusion as to the origin of Fitnessworld's goods would harm Adidas' reputation due to the perceived poor quality of Fitnessworld's products.
However, the European Court of Justice refused to stop Fitnessworld from using their two-stripe design, as the two stripes were purely decorative. However, the court held that if the design was linked to the mark of Adidas (for example, if three stripes were used by another manufacturer), then it would be a case for preventing such a mark from being used.
Briffa Comment
Registered trademarks are the best way to protect a brand, and the Community Trademark gives protection to a mark throughout the EU. However, not everything is registrable, and before choosing a logo or brand name care needs to be taken. The Wrigleys case shows that marks that are descriptive can not be registered, but there are a number of other things that could prevent registration.
Breach of trademark can occur when a business applies a mark which is identical to an existing registered trademark, or where a mark which is similar is used and there is a likelihood of confusion. In the case regarding Adidas, the court appears to have come to its decision on the basis of the particular facts of the case. The desirability of common patterns such as stripes being available for designers to use in their goods persuasive to the court.