Is your product a huge
success? Does everyone want to buy
one? Then be careful that its name does
not become the commonly-accepted name for that particular item.
A recent European Court of Justice
ruling is a warning to all those businesses who have achieved success with
their products. In fact, if you have
achieved such a huge success that everybody is calling that type of product by
your brand name, then you could have some difficulties protecting it. In the easily-pronounced,
“springs off the tongue”, nattily-named case of Backaldrin Osterreich The Kornspitz Co GmbH v Pfahnl
Backmittel GmbH (Case C-409/12); [2014] WLR (D) 112, the European Court
had to address the issue of the “inactivity” of the owner of a trade mark. The trade mark was “Kornspitz” which was
registered for baked goods. The owner
produced a baking mix which it sold to bakers who turned it into a particular
bread roll which was oblong in shape with pointy ends. The owner consented to the use of the trade
mark by the bakers and the distributors for the sale of the bread roll. Their competitors, however, realised that the
general public were using the trade mark as the name for a roll of that shape (as
an example, think of a certain vacuum-cleaner brand whose name passed forever
into the English language as a verb for vacuuming the carpet!) and filed an
application for the trade mark to be revoked.
The case went to appeal and the
revocation of the trade mark was upheld.
They said that, from the viewpoint of the end-user, the distinctive
character of the trade mark had been lost and the owners of the trade mark had
not done enough to protect it. Although
the sellers (the bakers and food distributors) were aware that the name was a
trade mark, they did not inform their customers that the name was a trade mark
and, therefore, contributed to the name becoming common usage. The owners of the trade mark failed to encourage
the sellers to make sure that the trade mark was pointed out to their customers
which could be classified as “inactivity” and the law said that the “inactivity”
of a proprietor of a trade mark which has become a common name for a product,
could make that trade mark liable to revocation.
So beware and if you produce a roll
of sticky-backed plastic for repairing ripped paper or you are a courier company for
sending parcels around the world, or even a world famous search engine, unless
you are happy for your brand name to become a household name that anyone can
use, take precautions to ensure that all users know that it is your trade mark.
Let's be careful out there!
The Crusader
www.john-kennedy.co.uk