Pilates, Escalator and Aspirin are all examples of trade marks which have become generic and synonymous with a particular good or service instead of being an indication of its origin. Article 12(2)(a) of the European Trade Marks Directive states that a trade mark is liable to revocation if, because of a trade mark owner’s actions or inactivity, it becomes the common name in the trade for a product or service for which it is registered. Last month, the European Court of Justice gave interesting guidance on the circumstances in which this can occur.
Backaldrin, a leading producer of baking ingredients in Austria, has manufactured Kornspitz bread mix since 1984.
The mix is supplied primarily to bakers and produces well-known pointy, oblong shaped bread rolls. An estimated 4.5 million, of what are largely known as “KORNSPITZ” bread rolls, are eaten every day.
Backaldrin registered the trade mark KORNSPITZ in Austria for goods including flour and bakery goods. It allowed bakers to use its trade mark when selling the bread rolls but bakers rarely informed their customers that KORNSPITZ was a registered trade mark or that the KORNSPITZ bread mix was used to produce the bread rolls. Backaldrin’s competitor, Pfahnl, successfully filed an application for the revocation of the trade mark on the basis that KORNSPITZ is perceived by customers as the common name for the oblong bread rolls. Backaldrin appealed.
In response to questions referred by the Austrian Supreme Patent and Trade Mark Court, the European Court of Justice ruled:
- a trade mark is liable to revocation where it has become the common name for the product even if solely from the point of view of the customers and not among the sellers, i.e. the bakers and distributors;
- if a trade mark owner does not encourage sellers to make more use of its mark in marketing the product for which the mark is registered, this could be classified as “inactivity” within the meaning of the European Trade Marks Directive; and
- the possible existence of other names for a product for which a trade mark has become the common name is irrelevant as it can’t change the fact that the trade mark has lost its distinctive character.
Tips to Protect your Trade Mark
Steps a trade mark owner can take to avoid its mark becoming generic include:
- use the ® symbol for registered trade marks in the country of registration and the ™ symbol for unregistered trade marks. This indicates that the mark is not simply a product description and puts third parties on notice of the trade mark owner’s claimed rights;
- refer to the mark as an adjective, not a noun or a verb;
- ensure that all commercial contracts clearly specify how the mark is to be used; and
- actively police the use of the mark and promptly deal with misuse and non- implementation of quality control provisions.