European Union continues to gum up U.S. trademarks

Monday, June 2, 2003
by Marc J. Lane

Reprint permission from the June 2, 2003 issue of Crain's Chicago Business.

To compete effectively in global markets, American exporters need trademark protection everywhere they do business. But the European Union is arbitrarily denying U.S. companies the trademark rights they've earned, and the time has come for diplomatic intervention.

Chicago-based Wm. Wrigley Jr. Co.'s seemingly never-ending battle to secure a European Union (EU) trademark on its 89-year-old, fabulously successful Doublemint brand proves the point.

The world's leading chewing gum maker first encountered double trouble in Europe in 1996 when the EU's Office for Harmonization in the Internal Market, which administers trademarks, unceremoniously rejected its application after concluding that Doublemint is nothing more than a "descriptive" word and thus ineligible for a trademark. (In Europe, as here, words that merely describe a product's characteristics don't merit trademark protection; they need to be imaginative.)

Wrigley disagreed, and appealed the decision in 1998, but a year later, the Board of Appeal sided with the Office of Harmonization.

From there, the company brought its case to the Court of First Instance, which annulled the Board of Appeal's decision. Its rationale: Doublemint might mean that Wrigley's chewing gum contains twice as much mint as some other gum, or that it's flavored with two different kinds of mint. Since Doublemint's meaning is unclear, the court reasoned, the word must be "suggestive," rather than descriptive. And suggestive words, unlike descriptive ones, qualify for trademarks.

The Office for Harmonization didn't buy the court's logic and has now moved Wrigley's trademark claim up the judicial ladder to the European Court of Justice, the EU's high court, which will decide the matter once and for all before the year is out.

In about 80% of cases, the Court of Justice endorses the view of the EU's advocate general, and he has just weighed in. Francis Jacobs acknowledged that Doublemint might describe a chewing gum that has double the normal amount of mint, whatever that is. Or it might describe a gum that contains two kinds of mint.

Either way, Mr. Jacobs opined, Doublemint is no more than a descriptive word.

Wrigley, which earns about 60% of its revenues outside the U.S. — much of it in Europe — already has trademark protection for Doublemint in 14 of the EU's 15 states.

But registering trademarks EU-wide keeps administrative costs down and affords trademark owners superior legal protection, which will become even more valuable next May when 10 Central and Southern European countries are expected to become members, expanding the EU's population to 450 million.

Mr. Jacobs may believe, as he wrote in his published opinion, that "the placing of a qualifier such as 'double' before a characteristic such as 'mint' is not structurally or syntactically unusual."

But Chicago residents know that there is something pretty special about Doublemint gum, and it transcends the literal meanings of "double" and "mint." Chicagoans also know that Mr. Jacobs' parochial view, influential as it is likely to be, stands to do irreparable harm to American businesses that attempt to register their well-known brand names in the EU.

Before more damage is done, the Bush administration must promote a treaty to ensure that long-recognized U.S. trademarks are presumed to be protectable in the EU, and that companies with established trademarks in Europe enjoy the same deference here.

Marc J. Lane ( is a Chicago lawyer and financial planner and an adjunct professor of law at Northwestern University School of Law.


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