The CJEU has now, on 6 March 2014, handed down its eagerly awaited decision in
Case C-409-12, Backaldrin Osterreich The Kornspitz Company concerning the
genericism of a trade mark (Kornspitz for foodstuff) in a case where the
sellers (here: bakers) of a product (here: Kornspitz bread rolls) made using the
material (here: prefabricated dough) supplied by the proprietor of the trade
mark (here: the claimant) do not generally inform their customers (here:
consumers buying bread in a bakery) that the sign (here: Kornspitz) used to
designate the product in question (here: bread roll) has been registered as a
trade mark; see the earlier IPKat post on the AG's opinion here.
“… the end users of … the bread rolls known as ‘KORNSPITZ’, perceive that word sign as the common name for that product and are not, therefore, aware of the fact that some of those bread rolls have been made using a baking mix supplied under the trade mark KORNSPITZ by a particular undertaking”; (Paragraph 23).The bakers did not generally inform their customers that the sign ‘KORNSPITZ’ was a registered trade mark, did not generally, at the time of sale, offer their customers assistance which includes an indication of the origin of the various goods for sale:
“… whether a trade mark has become the common name in the trade for a product or service in respect of which it is registered must be assessed not only in the light of the perception of consumers or end users but also, depending on the features of the market concerned, in the light of the perception of those in the trade, such as sellers.
However, as the Court pointed out in paragraph 24 of the judgment in Björnekulla Fruktindustrier, in general, the perception of consumers or end users will play a decisive role. It must be held, in line with what the Advocate General stated at points 58 and 59 of his Opinion, that in a case such as that at issue in the main proceedings, which is, subject to verification by the referring court, characterised by the loss of distinctive character of the trade mark concerned from the point of view of the end users, that loss may result in the revocation of that trade mark. The fact that the sellers are aware of the existence of that trade mark and of the origin which it indicates cannot, on its own, preclude such revocation;” (Paragraphs 28/29).
In response to question 2, the CJEU held that Article 12(2)(a) Directive must
“be interpreted as meaning that it may be classified as ‘inactivity’ within the meaning of that provision if the proprietor of a trade mark does not encourage sellers to make more use of that mark in marketing a product in respect of which the mark is registered.”The court referred to the underlying aim of Article 12(2)(a) Directive to balance the interests of the trade mark owner against those of his competitors in the availability of signs. Unless the pursuit of this balance was to be abandoned, that concept included all (in-)activity by which the proprietor of a trade mark showed “that he is not sufficiently vigilant as regards the preservation of the distinctive character of his trade mark”.