Recently, the ECJ ruled that a trademark can be revoked for the mere reason that the end users of the product see the trademark as a generic name for the good or service. It is not sufficient that retailers, who the trademark holder sells its products to, regard the trademark as an indication of origin. The trademark owner has a duty to encourage these retailers to use the trademark in a trademark-like fashion towards end consumers. If the trademark owner fails to do so, this could lead to a revocation of his trademark. It is advisable to always use an indication like ®, and to contractually bind resellers to do the same.

A trademark can be revoked if, as a consequence of the proprietor's acts or inactivity, it has become the common name in the trade for a product or service. In Backaldrin vs Pfahnl Backmittel, the ECJ ruled on preliminary questions concerning the conditions that need to be fulfilled in order to revoke a trademark on this ground. Backaldrin is the rightholder of the word mark 'Kornspitz' and produces a baking mixture which is sold to bakers. The baking mixture is then processed by bakers into bread rolls with a specific shape and taste. The bakers do not inform their consumers that 'Kornspitz' is a registered trademark, but they do sell the rolls under this name. The question arose about whether the wordmark 'Kornspitz' can be seen as a trademark or as a common name for a type of bread roll.

The ruling

First, the ECJ ruled that the perception of the consumers or end users is decisive in assessing whether a trademark has become a common name. In this case, the claimant's competitor and the bakers did perceive the word as a trademark. However, if solely the end users of the product perceive the trademark to be a common name, a trademark is already subject to being revoked. In this case, it was important that the bakers did not use the 'Kornspitz' name in a trademark-like fashion. Second, the ECJ ruled that the 'inactivity of the proprietor' can occur if the rightholder does not encourage resellers to correctly use the trademark.

The Backaldrin ruling clearly shows that trademark owners should be aware that any inactivity leading to the possibility of their trademark becoming a generic term could have serious consequences. For this reason, it is advisable to always use an indication like ®, and to contractually bind resellers to do the same.

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