With a decision of 05.04.2011, the Hamburg Regional Court ruled that the trade mark "Migration Factory" had become a customary designation of goods or services, with the consequence that it should be declared revoked, Art 51 (1 b) Community Trade Mark Regulation (CTMR). The decision is set out for example in GRUR-RR 2011, p. 270 et seq.
The claimant in this case was the owner of the community trade mark "Migration Factory", registered on 28.01.2003, for Software goods under Class 9, and in particular for Data processing services for others under Class 35, Training in the field of data processing under Class 41 and the Database services, including via networks, including the Internet; creating, maintenance and adaptation of software under Class 42.
The defendant in the proceedings used the designations "Migration Factory" and "PAAS Migration Factory" to designate services in connection with the migration of data and the associated software.
The claimant demanded that the defendant cease to use these designations on the grounds of trade mark infringement. In the counter-claim the defendant asked for the claimant's community trade mark "migration factory" to be declared null and void, or alternatively revoked.
The Hamburg Regional Court held that the term "migration" is used purely descriptively in the field of data processing. The general public in that field would understand it to denote a service that consisted of transferring data. Even the combination of the term "migration" with the term "factory" would not lead to a different assessment. The claimant and owner of the community trade mark "Migration Factory" had not taken action against third parties who used its community trade mark for the goods/services referred to in the registration. The passivity of the claimant had led to the designation "migration factory" becoming a customary designation for goods or services in the normal business of the public in the field in question. In accordance with Art. 51 (1 b) of the CTMR this caused the community trade mark "Migration Factory" to be pronounced revoked.
A similar fate is well-known to have been suffered by the trade mark "Fön" many years ago. "Fön" was originally a registered trade mark held by the company AEG. Over the years the word "Föhn" was well-known to have become a customary designation in German for a hairdryer, a process against which AEG took insufficient action. The same applies, for example, to the brand "Explorer", which over the years also became a customary designation among the general public in the field in question.
It is therefore advisable for all trade mark owners to keep a close eye on their trade marks and to take action against infringers, otherwise they risk their trade mark becoming a customary designation, and losing its protection as a trade mark.
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