10 Colum. J. Eur. L. 393 (2004)
Patrick S. Ryan, Katholieke Universiteit Leuven, Interdisciplinair Centrum voor Recht en Informatica (ICRI), Leuven, Belgium.
In 1994, the European Union passed a law establishing the Office for Harmonization in the Internal Market (OHIM), whose task is to register trademarks and designs at the Community level, called a Community Trademark. Wm. Wrigley Jr. Company, (Wrigley) a U.S. corporation, has registered its chewing gum brand DOUBLEMINT in almost all European countries, and many other locations, including, of course, the United States. Most of its registrations have been made on a country-by-country basis since the early part of the last century, and by applying for a Community Trademark, Wrigley sought to consolidate its portfolio of national registrations and benefit from economies of scale. However, the OHIM refused to register DOUBLEMINT because it found that it was “descriptive” of the characteristics of the gum, and therefore in violation of Article 7(1)(c) of Regulation 40/94. The European Court of First Instance reversed the OHIM Board of Appeals, and the OHIM appealed to the European Court of Justice (ECJ), which upheld the original OHIM Board of Appeals decision. In doing so, the ECJ clarified the criteria for registration of descriptive words, and at the same time it created some controversy, for the DOUBLEMINT trademark has enjoyed registration for many decades in many different countries.
