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Genericism: the dangers of becoming a household name

On 6 March 2014, the Court of Justice handed down a rare judgment on trade mark genericism: the question of how to deal with trade marks that are so closely identified with specific products, that On 6 March 2014, the Court of Justice handed down a rare judgment on trade mark genericism: the question of how to deal with trade marks that are so closely identified with specific products, that people forget they are indications of commercial origin.  The transition from indication of origin to generic word has been frequent historically and has proven a significant source of new words – examples include 'kiwifruit', ' dry ice' and 'heroin'.

The reference to the Court of Justice (case C-409/12 Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH) arose in the context of Austrian proceedings relating to the possible cancellation of the mark KORNSPITZ.  The mark was used by Backaldrin in relation to a prepared baking mix which was sold to bakers.  Bakers then used the baking mix to prepare bread rolls which were sold to customers.  These rolls were often referred to as 'Kornspitz' and Backaldrin had consented to bakers describing the product in these terms.

Registration of the mark for the baking mix had already been upheld by the Austrian court since the purchasers of the baking mix, the bakers, understood it to be a trade mark.  However, the Austrian court was uncertain as to whether the registration should be maintained for finished bread products.  Those products were sold by bakers to customers as 'kornspitz' but while the bakers knew it was a trade mark, the customers did not.  Unsurprisingly, the Court of Justice found that in this case the perspective of end customers was determinative and if those customers do not consider a mark to indicate trade origin, then it is generic.

The Court also considered the question of whether the genericism of the mark could be considered to arise from the 'acts or omissions' of the owner.  In this case, Backaldrin was aware that bakers used the term 'kornspitz' to describe the bread rolls and had not taken steps to ensure that those bakers informed customers that it was a trade mark.  This did constitute an omission for the purposes of the legislation.

The likely outcome of the case is that while Backaldrin will still be able to prevent third parties from marketing baking mix to bakers under the name KORNSPITZ, they will not be able to prevent bakers from sourcing alternative baking mixes and then making a comparable end product and describing it as 'Kornspitz' at the point of sale.  This case serves as an important reminder that control of the brand is important throughout the supply chain.  If a business providing intermediary products is aware that its customers are using its trade marks when describing finished products to customers, it is essential that that use is controlled.  Ideally, customers should operate as licensees of the brand owner, using the mark under suitable brand guidelines and ensuring that the commercial value arising as a result of public awareness of that mark among end-users accrues to the goodwill of the brand rather than contributing to the impending genericism of the trade mark.

 

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