Verval van een succesvol merk dat een “in de handel gebruikelijke benaming” is geworden

Successful trademarks may become generic and lose their exclusive trademark status. This was once more confirmed by the Court of Justice of the EU in the recent Kornspitz case. But trademark owners can avoid their trademark becoming generic by taking action against particular uses of their trademark.

Trademark owners must be careful that their trademark does not become too successful and therefore become generic. A trademark that no longer fulfils the essential function of designating the origin of goods or services may be revoked. This happens when a sign is no longer used to refer to a good or service of a particular undertaking (a species) but rather to a category of goods or services (a genus). The notion of “genericism” is illustrated by examples such as ASPIRIN, ESCALATOR, LINOLEUM, KLEENEX and CELLOPHANE, all famous brands that were once protected as trademarks but later became the common name for the goods they were used for, at least in one or more territories.

The Court of Justice of the EU (CJEU) recently revisited the issue of genericism in the Kornspitz case. In this case, the company Backaldrin had registered the trademark KORNSPITZ for a baking mix that it supplies primarily to bakers. They turn that mix into a bread roll which is oblong in shape and has a point at both ends. Backaldrin consented to the use of that trademark by those bakers and the foodstuff distributors supplied by them. Backaldrin’s competitors and the majority of bakers know that the word KORNSPITZ has been registered as a trademark, but end users perceive it as the common name for typical bread rolls. That perception is explained, inter alia, by the fact that the bakers using the baking mix provided by Backaldrin do not generally inform their customers either that the sign KORNSPITZ has been registered as a trademark or that the bread rolls are produced using that mix.

The CJEU assessed the question of whether a trademark is liable to revocation if that trademark has become the common name, not according to the perception of the sellers of the finished product but according to the end users of the product. Backaldrin argued that even if consumers have ceased to be aware of the existence of a trademark, the fact that bakeries and food retailers are aware of the term’s status as a trademark prevents it from developing into a generic name. The CJEU disagreed and held that a trademark is liable to revocation in respect of a product for which it is registered if that trademark has become the common name for that product “from the point of view solely of end users of the product”. The CJEU specified that the fact that the sellers are aware of the existence of the trademark and of the origin which it indicates cannot, on its own, preclude revocation.

To prevent a trademark becoming generic, the trademark owner must take steps to defend his trademark. According to the CJEU, there is “a requirement of vigilant conduct”. Obviously, the proprietor must avoid using his trademark in such a way that it will be perceived by the relevant public as a generic name for the goods or services concerned, rather than as the indication of origin. If a new product or service has been developed and put on the market under a trademark, the proprietor of that trademark should also propose a generic name for his product or service, to distinguish it from the trademark. Apple, for instance, informs the public on its website that the generic word for its iPad or iPod products is “mobile digital device” and that the words iPad and iPod are registered trademarks.

The proprietor of a (successful) trademark that is liable to become generic should inform the public that the trademark is protected, as follows: by adding the (R) or TM signs to the trademark; by explaining in advertising materials, on the website or on the packaging of products that the trademark is a registered trademark; by using the trademark with capital letters or in a particular font or design, etc. In the Kornspitz case, the CJEU revoked the trademark because the proprietor had not encouraged the sellers of the bread rolls made with the KORNSPITZ bakery mix to inform their customers that the KORNSPITZ sign used to designate the product was registered as a trademark.

Finally, if a Community trademark is reproduced in a dictionary, encyclopaedia or similar reference work, which gives the impression that the trademark constitutes the generic name of the goods or services for which the trademark is registered, the trademark proprietor should request the publisher to indicate alongside the reproduction of the trademark in the next edition of the publication that it is registered as a trademark.
1 C.J.E.U. 6 March 2014, C-409/12, Backaldrin Osterreich The Kornspitz Company GmbH v. Pfahnl Backmittel GmbH