Revocation of successful trademarks that became “common in the trade”

Trademark owners must be careful that their trademark does not become too successful and therefore become generic. A trademark that no longer fulfils the essential function of designating the origin of goods or services may be revoked. This happens when a sign is no longer used to refer to a good or service of a particular undertaking (a species) but rather to a category of goods or services (a genus). The notion of “genericism” is illustrated by examples such as ASPIRIN, ESCALATOR, LINOLEUM, KLEENEX and CELLOPHANE, all famous brands that were once protected as trademarks but later became the common name for the goods they were used for, at least in one or more territories.

The Court of Justice of the EU (CJEU) recently revisited the issue of genericism in the Kornspitz case. In this case, the company Backaldrin had registered the trademark KORNSPITZ for a baking mix that it supplies primarily to bakers. They turn that mix into a bread roll which is oblong in shape and has a point at both ends. Backaldrin consented to the use of that trademark by those bakers and the foodstuff distributors supplied by them. Backaldrin’s competitors and the majority of bakers know that the word KORNSPITZ has been registered as a trademark, but end users perceive it as the common name for typical bread rolls. That perception is explained, inter alia, by the fact that the bakers using the baking mix provided by Backaldrin do not generally inform their customers either that the sign KORNSPITZ has been registered as a trademark or that the bread rolls are produced using that mix.