A recent case in The European Court of Justice, Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH C-409/12, has explored Article 12(2)(a) of the Trade Marks Directive, which states that a registered trademark can be revoked if it has become the common name for a product due to the acts or inactivity of the trademark owner. The following legal points resulted from the case:

• The perception of end-users plays a decisive role in deciding whether or not a trademark has become a common name; and
• “Inactivity” goes beyond a simple failure to sue infringers and also includes situations where the owner of a trademark has not been vigilant enough in preserving the distinctive character of the mark. In practice, the case highlights the importance of supply and distribution agreements containing clauses detailing how the buyer must represent the brand. Such clauses must be strictly enforced by the trademark owner. Trademark owners must also monitor the general use of their trademark by traders and customers alike and take enforcement action when necessary.

If you have any concerns about issues relating to the intellectual property of your business, please contact Druces LLP’s Corporate & Commercial Team for more information.