The Kornspitz bread brand may die of success among consumers

The court
of Justice of the European Union pronounces itself in its ruling of March 6,
2014 C-409 / 12, on the conditions that must be met for the declaration
expiration of a trademark motivated by its vulgarization.

At the
assumed, the Austrian brand KORNSPITZ had become for the
consumers in the usual designation of a type of loaf of bread, but not so
for the bakers who make and sell those bars to the public from the
raw material supplied by the trademark owner.

For
Well, the Court follows the criterion that it had already pointed out in its ruling of 29
April 2004, Björnekulla Fruktindustrier, C-371 / 02, in a matter of
similar characteristics - although in that case it was pickles in
vinegar instead of bread. In the opinion of the Court, the perception of the
consumers or end users of the product plays a decisive role in the
time for the assessment of the vulgarization of the brand. Therefore he concludes that
its expiration can be declared due to vulgarization when it has become the
usual designation of the product among consumers but not among
sellers of the same.

A
The Court then examines the conditions under which a certain
conduct of the trademark owner can be considered as
"inactivity" within the meaning of article 12 b) of the Trademark Directive 2008/95 and, specifically, if the absence of actions aimed at inducing
sellers of the product to inform their customers that the sign used
is registered as a trademark can be considered as such “inactivity”.

La
The Court's answer to this question is positive, which evidently
imposes a high burden on trademark owners.

By
Lastly, the Austrian court referring the question for a preliminary ruling raises the
matter of Yes, to be able to declare the expiration of the trademark due to vulgarization
It is necessary that other names exist for the product in question different
of the registered trademark.

The court
of Justice considers this circumstance irrelevant, since in no case
would modify the fact that the mark had become the usual designation
of the product, which is the requirement established by legal precept.