A Rose by Any Other Name

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