Success with consumers may do in the KORNSPITZ brand for bread rolls

In its judgment of 6 March 2014 in Case C-409/12, the Court of Justice of the European Union ruled on the conditions to be fulfilled for a declaration of revocation of a trademark due to loss of distinctive character.

In the case in question, the Austrian trademark KORNSPITZ had become the commonly used name for a type of bread roll among consumers but not among bakers, who baked the rolls and sold them to the public from a mix supplied by the trademark owner.

The Court followed the ruling already made in its judgment of 29 April 2004 in Case C-371/02 (Björnekulla Fruktindustrier) in a similar matter, though involving pickled gherkins instead of bread rolls. In the opinion of the Court, the consumers' or end users' perception of the goods is a decisive factor in assessing whether a trademark has become commonplace. It therefore concluded that a trademark may be cancelled on grounds of lost distinctiveness where it has become the common name for a product among consumers but not among sellers of that product.

The Court then considered the conditions in which a trademark owner's conduct may be deemed to be "inactivity" within the meaning of Article 12.2.b) of Trademark Directive 2008/95, more specifically, whether the trademark owner's failure to take action to encourage sellers of the product to inform customers that the name is a registered trademark can be regarded as "inactivity".

The Court answered that question in the affirmative, which quite clearly places a heavy burden on trademark owners.

Lastly, the Austrian court that referred the issue for a preliminary ruling also asked whether revocation of a trademark on grounds that it has become the common name for a product necessarily presupposes that it must be ascertained whether there are other names for that same product besides the registered trademark.

The Court ruled the existence of other names to be irrelevant in that in no case would that alter the fact that the trademark had become the commonly used name for the product, the condition for revocation laid down in the Directive.

Author: Carlos Morán

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