New CJEU reference on genericness of trade marks

The Austrian Supreme IP Tribunal recently sent some questions to the Court of Justice of the EU (CJEU) Luxemburg to clarify certain aspects concerning the requirements under which a trade mark becomes generic.

In the underlying case a revocation action was filed with the Austrian Patent Office arguing that the trade mark "Kornspitz" (which basically means "corn horn") for products of class 30 had become generic. The products in class 30 comprise i.a. grain mixtures as well as bakery products.

The Revocation Board of the Patent Office revoked the trade mark as a whole, although it found that (only) for end consumers the trade mark "Kornspitz" had become a common name in the trade for bakery products. However, it was also found that bakers and grocers still were aware that "Kornspitz" was a trade mark for intermediate and raw products. Thus, the Supreme IP Tribunal found that the first instance decision erred anyway with respect to specific goods, however it asked the CJEU for guidance with respect to end consumer products.

Accordingly, the CJEU will have to clarify whether a trade mark has become generic for end products (bakery products) although traders know that the mark constitutes an indication of origin. However, the traders which are aware of trade mark protection do not disclose this to end consumers and that end consumers - due to the fact that traders do not hint to trade mark protection - no longer understand the trade mark as an indication of origin but as the common name for specific bakery products.

Additionally, the Supreme IP Tribunal has asked for guidance with respect to the 'inactivity' set forth in Article 12(2)(a) of the Trade Mark Directive. In the present case there were virtually no acts of infringement reported, accordingly the trade mark proprietor had no occasion to 'actively' enforce its right. However, traders did not inform customers that the name is a registered trade mark and traders were not actively pushed by the trade mark proprietor to disclose the name as a trade mark. Does this behaviour constitute inactivity in the meaning of the Trade Mark Directive?

Finally, it is asked whether the trade mark in suit has become generic if and only if end consumers have to use this name, because there are no equivalent alternatives. Interesting questions of law - it is hoped that the CJEU will provide us with some clear and unambiguous interpretation of the relevant EU law.

Dr Rainer Beetz, LL.M.