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 Examples of previously registered marks that have been revoked include ASPIRIN, CELLOPHANE and YO-YO.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…

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