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When trade marks become generic

Kornspitz, Tempo, Walkman, Flip Flop – registered trade mark or already generic?
Over time, registered trade marks may become generic names or common names. This is the case if the trade mark is no longer understood by the relevant public as an indication of commercial origin which distinguishes the product from others, but only as a common name generally used to designate all goods or services of a particular kind, irrespective of their commercial origin. For example, the Landgericht (LG) München (Munich Regional Court) has found that the trade mark "Wedges", registered for goods including also "frozen or prepared potatoes", has become a generic name for those goods, namely a synonym for the word "Kartoffelspalten” (potato wedges/steak fries) (LG München I, judgment of 9 May 2001, HKO 12/01, InstGE 2, 32, 37).

Development of registered trade marks into generic names as a ground for revocation

The development or rather the conversion of a registered trade mark into a generic name constitutes a ground for revocation under section 49(2) no. 1 of the Trade Mark Act, which may result in the cancellation of the trade mark from the register of the DPMA provided the legal requirements are fulfilled. However, there are high requirements for such cancellation due to revocation.

The DPMA must not examine on its own initiative – that means ex officio – whether, after its registration, a registered trade mark has become generic for all or part of the goods and services for which it is registered. The DPMA may only conduct such an examination upon a written request within the scope of what are known as revocation proceedings under section 53(1) in conjunction with section 49(2) no. 1 of the Trade Mark Act.

Details of revocation proceedings

A fee of 100 euros must be paid for the proceedings within three months from filing the application for revocation. The application for revocation may seek the total cancellation of the trade mark for all goods and services for which the trade mark is registered or the partial cancellation of the trade mark. The application may be filed by any person.

If the application for revocation is allowed, the DPMA will inform the trade mark proprietor about the application challenging his trade mark. The trade mark proprietor may object to the application for revocation within two months from receipt of the application. If he does not object or does not object within the time limit, the DPMA will revoke by decision his trade mark to the extent sought by the application and will order the cancellation of the registration from the trade mark register. If the trade mark proprietor objects within the time limit, the objection will be served to the person having filed the application and he will be invited to pay a fee of 300 euros for continuing the proceedings. The period for payment of the fee for pursuing the application further is one month. It starts when the trade mark proprietor's objection is served to the person having filed the application. If the person having filed the application for revocation does not pay the fee for pursuing the application further or does not pay the fee within the time limit, the revocation proceedings will be closed. The DPMA will inform the parties to the proceedings about this. If the person having filed the application pays the fee for pursuing the application further within the time limit, the DPMA will give the parties to the proceedings the opportunity to comment and will examine whether the requirements for the ground for revocation under section 49(2) no. 1 of the Trade Mark Act are fulfilled.

Requirements for the ground for revocation under section 49(2) no. 1 of the Trade Mark Act

In essence, these include:
1. Conversion into a generic name

The trade mark must have developed into a common name. For the assessment, the perception of the relevant public at the time of the decision on the application for revocation is crucial. The relevant public are the consumers and end users of the goods and services for which the trade mark is registered and, as a rule, also the manufacturers, traders, intermediaries or suppliers and providers of these goods and services. The assumption that the mark has become a common name can only be accepted if almost the entire relevant public perceives the trade mark as a generic name. According to the case law, "almost the entire" means that the trade mark is perceived as an indication of origin only by a completely insignificant part of the relevant public. The requirements for the acceptance of the assumption that the trade mark has become generic are high in order not to unfairly disadvantage trade mark proprietors. Therefore, it is true that the inclusion of a term as a generic name in a lexicon constitutes a strong indication that the designation has become a generic name, but it is not sufficient as the sole basis for acceptance of the assumption (Federal Patent Court, order of 19 December 1997, 33 W (pat) 209/96, GRUR 1998, 722 - GILSONITE).

2. As a consequence of acts/inactivity of the trade mark proprietor
Another requirement is that the development of a trade mark into a generic name is due to acts or inactivity of the trade mark proprietor. This means that the trade mark proprietor must either have actively contributed to this development, for example by using the trade mark as a generic name himself. Or that the trade mark proprietor has failed to take any countermeasures (e.g. cease and desist letters) although he has been aware or should have been aware that the trade mark might be developing into a generic name, for example, because competitors have been using the trade mark in a descriptive manner. This means that proprietors of trade marks which are well-known and highly successful can actively counteract the development of their trade mark into a generic name and the loss of their trade mark rights resulting therefrom by taking appropriate countermeasures.

3. Conversion after registration
The trade mark must have become generic after its registration in the DPMA register. If the trade mark has already been generic before its registration, the application for revocation will not be successful. In that case, there is no ground for revocation but, possibly, a ground for a declaration of invalidity, which could be asserted in invalidity proceedings under section 53(1) in conjunction with section 50 of the Trade Mark Act.

Only if all requirements of section 53(1) in conjunction with section 49(2) no. 1 of the Trade Mark Act are fulfilled, the DPMA will fully or partially revoke the trade mark because it has become generic and will order by decision the full or partial cancellation of the registration of the trade mark from the DPMA register. The decision will be served to the parties to the proceedings. The parties to the proceedings may file an appeal against the decision with the Federal Patent Court within one month of service of the decision.

If a full or partial cancellation of the registration of the trade mark in the register is ordered, the DPMA will not cancel the registration of the trade mark until the decision concluding the revocation proceedings has become final.

Alternatives to revocation proceedings before the DPMA

As an alternative to revocation proceedings before the DPMA, there is also the option of bringing an action before the courts of ordinary jurisdiction (section 55 of the Trade Mark Act) in order to determine whether a trade mark has become generic. The court will send a copy of the final judgment to the DPMA. The result and other data of the court proceedings will be published in the DPMA register.

Picture: iStock.com/adam smigielski

Last updated: 20 October 2020 

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