Kornspitz: Court of Justice to rule on the meaning of inactivity

Another week, another batch of intellectual questions is set to go to the Court of Justice of the European Union in the hope that it will provide more answers than questions in return. This time it's the turn of Case C-409/12 Backaldrin Österreich The Kornspitz Company, a reference from the Oberster Patent- und Markensenat, Austria. The UK's Intellectual Property Office (IPO) summarises the issue at the heart of this reference as

" ... a request ... to determine whether a trade mark shall be liable to revocation if after the date on which it was registered it has become the common name in the trade for a product or service".

There are three questions in the formal version of the reference, which read like this:

1. Has a trade mark become ‘the common name ... for a product or service’ within the meaning of Article 12(2)(a) of Directive 2008/95 [to approximate the laws of the Member States relating to trade marks -- this being the codified version of the oft-amended Directive 89/104], where

(a) although traders know that the mark constitutes an indication of origin they do not generally disclose this to end consumers, and

(b) (inter alia) on those grounds, end consumers no longer understand the trade mark as an indication of origin but as the common name for goods or services, inrespect of which the trade mark is registered?

2. Can the conduct of a proprietor be regarded as ‘inactivity’ for the purposes of Article 12(2)(a) of Directive 2008/95 simply if the proprietor of the trade mark remains inactive notwithstanding the fact that traders do not inform customers that the name is a registered trade mark?

A Kornspitz

3. If, as a consequence of acts or inactivity of the proprietor, a trade mark has become a common name for end consumers, but not in the trade, is that trade mark liable to be revoked if, and only if, end consumers have to use this name because there are no equivalent alternatives?

As usual, no clue is given as to the background of the litigation leading to this litigation. Properly so, says Merpel : it is a welcome European tradition to keep the facts as far away from the analysis of legal propositions as possible, to avoid the risk that the purity of legal theory might be contaminated by coming into contact with reality. The IPKat would however love to know what this dispute is really about, and invites his readers to let him know.

An unkind and cynical critic might suggest that, while the Court of Justice has sometimes shown itself unequal to the task of understanding intellectual property laws, here at least is a reference on a subject on which the Court has some understanding: inactivity. No self-respecting Kat would of course harbour such a thought ...

If you would like to advise the IPO as to the position it should be recommending that the UK government takes in this case, just email policy@ipo.gsi.gov.uk by 22 October 2012.