Trade mark owner must bake smaller rolls

If a trade mark owner wishes to prevent his trade mark from becoming a generic designation, he must actively combat this. To this end, it may be necessary for the manufacturer of a semi-finished product – in this case bread mixes – to require his customers to use the trade mark in commerce as such. A sophisticated trade mark strategy is of inestimable value in this regard.

The Austrian manufacturer of a bread mix has registered a word mark "KORNSPITZ" for this product (Class 30 – cereal preparations, bakery goods, etc.). The bread mix is processed by the purchasing bakers and sold in a special form as "Kornspitz".

The customers are aware that this is a trade mark of the manufacturer, but the end consumers are not. The Highest Patent and Trade Mark Senate referred the matter to the EuGH to provide preliminary rulings on certain interpretation questions concerning the MarkenRL, as it is considering cancelling the trade mark due to revocation.

The decision of the Court

The EuGH held that a trade mark may be revoked if, as a result of the conduct or inactivity of the trade mark owner, it has become, from the perspective of end consumers, a common designation for that class of goods for which it is registered. This applies regardless of whether the downstream purchasers of the goods (the bakers) are aware that the term "Kornspitz" constitutes a registered trade mark. The Court considers that the trade mark owner's failure to encourage resellers to use the sign as a trade mark, that is to say as an indication of origin, may also constitute "inactivity" in this sense. According to the Court's view, it is irrelevant that alternative generic designations exist for the (revoked) trade mark.

Conclusion

The decision confronts manufacturers of semi-finished products with considerable problems. As long as the trade mark is only protected for the semi-finished product, but not for the finished product (rolls), they have no effective means of enforcing the use of their trade mark in the end consumer business. This leaves only the registration of the trade mark also for the finished product and its use by means of granting licences to the customers. In any event, the manufacturer is called upon to actively promote the use of the trade mark in order to avoid revocation due to non-use.