Becoming a common name for end users of that product can be sufficient ground for revocation of a trade mark

TRADE MARK LAW

Becoming a common name for end users of that product can be sufficient ground for revocation of a trade mark.

"30. It follows from all of the foregoing considerations that the answer to the first question referred is that Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that, in a case such as that at issue in the main proceedings, a trade mark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the proprietor, that trade mark has become the common name for that product from the point of view solely of end users of the product."

The fact that the proprietor of a trade mark does not encourage sellers to make more use of a trade mark in marketing a product may be classified as ‘inactivity’ by the proprietor.

"36. [...] that Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that it may be classified as ‘inactivity’ within the meaning of that provision if the proprietor of a trade mark does not encourage sellers to make more use of that mark in marketing a product in respect of which the mark is registered.
34. Consequently, in a case such as that described by the referring court, in which the sellers of the product made using the material supplied by the proprietor of the trade mark do not generally inform their customers that the sign used to designate the product in question has been registered as a trade mark and thus contribute to the transformation of that trade mark into the common name, that proprietor’s failure to take any initiative which may encourage those sellers to make more use of that mark may be classified as inactivity within the meaning of Article 12(2)(a) of Directive 2008/95."

Further more, it is irrelevant for the revocation of a trade mark, that has become the common name of product, that there are other names for the product.

"40. Consequently, the answer to the third question referred is that Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that the revocation of a trade mark does not presuppose that it must be ascertained whether there are other names for a product for which that trade mark has become the common name in the trade."

IPPT20140306, CJEU, Backaldrin v Pfahnl

C‑409/12 - ECLI:EU:C:2014:130