Victims of their own success: trademarks that become the common name for their product or service
It is possible for a registered trademark 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 Examples of previously registered marks that have been revoked include ASPIRIN, CELLOPHANE and YO-YO.
In Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH, 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…
Click on the link below to read the rest of the Walker Morris briefing.
Sign in or Register to continue reading this article
It's quick, easy and free!
It takes just 5 minutes to register. Answer a few simple questions and once completed you’ll have instant access.Register now
Why register to The Lawyer
In-depth, expert analysis into the stories behind the headlines from our leading team of journalists.
Identify the major players and business opportunities within a particular region through our series of free, special reports.
Receive your pick of The Lawyer's daily and weekly email newsletters, tailored by practice area, region and job function.
More relevant to you
To continue providing the best analysis, insight and news across the legal market we are collecting some information about who you are, what you do and where you work to improve The Lawyer and make it more relevant to you.
News from Walker Morris
News from The Lawyer
Briefings from Walker Morris
The Infrastructure Act is intended to boost investment in development projects. The practical and commercial implications of the new measures are wideranging.
In Andrew Parissis v Blair Court (St John’s Wood) Management, the judge in the Upper Tribunal (Lands Chamber) provided some useful guidance.
Analysis from The Lawyer
Which firms are cutting it in this era of slimline rosters, and who are the GC new brooms making clean sweeps? The Lawyer can reveal all
The law school war shows no signs of ending. But we have, perhaps, reached the end of the beginning.