Victims of their own success: trade marks that become the common name for their product or service

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It is possible for a registered trade mark to be a victim of its own success. Where, in consequence of the acts or inactivity of the proprietor, the name becomes commonplace in the trade for the product or service in respect of which it is registered it may be revoked under Article 12(2)(a) of the Trade Marks Directive. Examples of previously registered marks which have been revoked include ASPIRIN, CELLOPHANE and YO-YO.

In Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH [1], Backaldrin was the registered proprietor of the mark KORNSPITZ in respect of various bakery goods. Backaldrin produced and sold a baking mix, which was used and supplied primarily to bakers, most of whom were aware that KORNSPITZ was a registered mark. They also sold a certain type of bread roll, known as a “kornspitz” roll, without informing their customers that the word was a registered mark nor that the roll was prepared using a mix supplied by Backaldrin under the KORNSPITZ mark.

Phahnl, a competitor of Backaldrin, sought revocation of the KORNSPITZ mark on the basis that it had become the common name for a particular type of bread roll, namely an oblong with a point at both ends. Following national proceedings, questions were referred to the Court of Justice of the European Union (CJEU) for a preliminary ruling.

The first question was whether a mark such as the KORNSPITZ mark was liable to revocation where those in the trade knew that the mark constituted an indication of origin but did not disclose this to their customers, and the customers did not know that the mark was an indication of origin, but rather they assumed it to be the common name for the product in question.

The CJEU answered this question by saying that such a mark was liable to revocation where, in consequence of the acts or inactivity of the proprietor, the trade mark had become the common name for that product from the sole perspective of the end-user. Part of the explanation for this was that, if consumers perceived it to be a common name for the product, the mark could clearly not be fulfilling its function as an indication of origin. Interestingly, the CJEU made the point that whilst the perception of traders was relevant, the case law showed that it was the perception of consumers that was decisive.

On what constituted “inactivity of the trade mark proprietor”, the CJEU said that this did not just mean a failure to sue infringers but also meant omissions that showed that the proprietor was not sufficiently vigilant in preserving the distinctive character of the mark. In this case, Backaldrin did not appear to have taken any steps to encourage their distributors to make more use of the KORNSPITZ mark when dealing with customers. That kind of failure could constitute “inactivity of the proprietor” for the purposes of Article 12(2)(a).

Finally, the CJEU explained that it was immaterial whether or not alternative names existed for the product in question.

The lesson from the case for proprietors is to ensure that they cannot be deemed to have been sufficiently inactive for the purposes of Article 12(2)(a). Including provisions in distributorship agreements regarding the use of the trade mark by the distributor, such as not using the mark descriptively (i.e. KORNSPITZ bread roll) and making sure consumers are appropriately notified of the registration (i.e. the trade mark is actually used), and then practical policing of such provisions is a good starting point.


[1] Case C-409/12