22 May 2014 by

Trade Marks: What happens when everyone refers to a moving staircase as an Escalator?

The European Court of Justice (ECJ) has recently ruled on questions relating to the loss of a trade mark where the trade mark has become commonplace or generic in the market.

The Trade Marks Act 1994 defines a trade mark as being “any sign capable of being represented graphically which is capable of distinguishing goods or services”.  For many businesses the time and cost involved in registering a trade mark is often quickly offset against the value of owning the trade mark and the right to prevent others using the same or a similar mark in the market in which the business operates.

That being said, when a trade mark becomes a generic term, the owner of the trade mark may encounter serious problems in preventing usage as they may lose the trade mark protection.  This has been highlighted recently in relation to the Austrian trade mark “Kornspitz” which is used in the manufacture process of baking.   Although many bakers were aware of the trade mark, the bakers sold a distinctively shaped bread roll called  a “kornspitz” roll, without informing customers of the associated trade mark.

A competitor of the owner of the Kornspitz trade mark brought a claim for the trade mark to be revoked on the grounds that it had become a common name in the market for a shape of bread roll, rather than a baking product.

The test for whether a product has become a common name contains two principal questions:

(i) has the trade mark become a common name in the trade for a product or service; and

(ii) has the trade mark owner failed to prevent the name from becoming common in the trade.

In reaching its decision the ECJ placed emphasis on the point of view of the end-user of the product and not the specialist traders.  Although the traders knew that the word was a registered trade mark this information was not passed onto customers and therefore the customers related the name to the distinctively shaped bread roll and not to the baking product from which it was made.

With regard to the second test, the ECJ stated that the trade mark owner’s inactivity went further than failing to sue infringers, but included a lack of vigilance on their part to preserve the distinctive character of the trade mark.  As an aside, Google have been very active to ensure that its trademarked name does not become generic e.g. to search the internet.  Google’s actions include writing to the media asking them to ensure, when using the word Google, that it is always capitalized and also writing to a new word website asking them to include a notice that Google is a trade mark owned by Google Technologies Inc.

Although the Kornspitz product might not be recognized by all, many products that you do recognise have had their trade mark status revoked, for example:

  • Escalator for a moving staircase
  • Sellotape for clear adhesive tape
  • Aspirin for acetylsalicylic acid 

It may be unlikely that you find yourself in this position, but the case shows the importance of actively protecting brands in all situations in order to protect the value attached to the name. Some simple steps can be taken to guard against loss of value, such as ensuring clauses are included in all relevant contracts to manage how the other party deals with the brand and its representation to end-users.  Owners must monitor compliance of these agreements and the public perception of the product, and take action to enforce the contractual terms.

For more information on trade marks and contractual protection please contact us on 0207 288 4700 or email as at info@boltburdon.co.uk

2 May 2014 by

All will be lost, if you cannot evidence breach caused your loss

In a recently decided case the Technology and Construction Court provided a timely reminder to claimants in professional negligence actions […]

9 May 2014 by

To sell or not to sell; that is the (taxing) question

Non-resident property owners to become liable for UK capital gains tax from April 2015 At present, and ignoring certain anti-avoidance […]

Signup To Our Weekly e-News

"*" indicates required fields

We’ll never share your details with any third party in line with our privacy policy.