Attorney at Law
Trademark genericism, but for whom do they become generic? (ECJ Judgment 6 March 2014)
When a trademark is genericized, it can be grounds for revocation thereof. It occurs when a validly registered and distinctive sign loses that ability to distinguish the good or service as being from a particular corporate origin and becomes, “in trade”, a common name for the type of good or service it distinguishes. By losing this ability to distinguish the good or service as regards the corporate origin, it stops working like a trademark and should therefore be revoked. In the European system, in addition to the trademark becoming the common name for the good or service, acts or inactivity of the proprietor leading to said situation is also required.
Facts: Backaldrin (B) registered the trademark Kornspitz for, inter alia, «preparations made from cereals and bakery goods». B produces a baking mix for preparing dough that it distributes primarily to bakeries, which then turn it into a bakery product with two pointed ends, and these pastries are in turn distributed (under the trademark and with B’s authorization) to end users.
Therefore, there are different customers and products: professional intermediate customers who purchase the baking mix, and end users who purchase prepared pastry products.
Questions are raised concerning the end product: In order to revoke the trademark on the grounds that it has become a generic name, which of the parties will consider Kornspitz the common name for the end product? Although it is important to take into account how the trademark is perceived (as a trademark or as a common name for the product) by end consumers and professionals involved in marketing the product, end consumer perception prevails, and the fact that the professionals involved in marketing the product know that it is a trademark does not merit preventing revocation.
Activity or inactivity of the proprietor (concerning the genericism process). It would be very strange for a trademark proprietor to adopt certain conducts that make it easy for his trademark to become generic. However, inactivity of the proprietor is indeed relevant. Proprietors must be proactive and assert their rights. The judgment questions whether or not the proprietor led product vendors to use the trademark when selling the end product, as it would be an indication of inactivity.
Google, it’s about time you forget about me!
ECJ Judgment of 13 May 2014 (Grand Chamber, case C-131/12) stems from a pre-trial issue raised by the National Court of Spain. The dispute arises between a natural person and Google Spain and Google Inc. in relation to the individual’s claim that the search engine should remove or conceal his personal data so that they would not turn up in search results. Specifically, the issue was that when the complainant entered his name in the search engine in 2010, two hits mentioning the complainant’s came up from the year 1998 in reference to a real estate auction connected with attachment proceedings prompted by social security debts (furthermore the attachment had already been settled some time ago). The judgment states:
To begin with, on one hand the activity of a search engine, consisting of locating information published or included on the net by third parties, indexing it automatically, storing it temporarily and finally making it available to Internet users according to a particular order of preference, must be interpreted as “processing of personal data” when that information contains personal data of third parties; and on the other hand, the undertaking managing a search engine must be regarded as being “responsible for said processing”.
Furthermore, provided that the undertaking managing a search engine complies with legal requirements (fair and lawful processing, for explicit and lawful, suitable, relevant, precise and up-to-date purposes), taking into account the type of information, how sensitive it is in the private life of the person involved and the public’s interest in obtaining said information, such undertaking must remove links to webs, information published by third parties containing information relating to a particular person from the list of results obtained after conducting a search for such person’s name. The same applies in the event that this name or this information is not removed in advance or simultaneously from these web pages, even though the information was lawfully published on said pages.
Additionally, this right to be forgotten in relation to information retrieved by search engines prevails not only over the economic interest of the undertaking managing said engine, but also over the public’s interest in accessing said information in a search for the name of a particular person, although the information does not have to be prejudicial to the person in question in order to be acknowledged, unless said person is of public interest, where only the right to information would prevail.
© José GARRIDO
José GARRIDO holds a Bachelor of Laws (LL.B.) from the Universidad Autónoma de Madrid, as well as a post-graduate degree in Spanish and European Patents from the Universidad de Barcelona. He continued his specialization in intellectual property law in Berkeley (California, USA) with a 6-month stay, with an in-depth study of trade mark law. He also pursued post-graduate private law courses at the Universidad Autonoma de Madrid. After garnering experience in two different firms, he founded Garrido Pastor Abogados in 1995. This firm combines the filing and registration of intellectual property rights with advising and litigation services concerning these rights.
Lecturer at Universidad Autónoma de Madrid on the Master on Intellectual Property
“La publicidad financiera y bancaria como publicidad informativa”. Revista de Derecho Bancario y Bursátil.
“La nulidad de la marca solicitada con mala fe” at press “50 years of AIPPI National group”
Attorney, European Community Trademark and Design Attorney, Member of the Bar Association of Madrid, and member of INTA and AIPPI.