Vulgarization of Trademark

When can we talk of vulgarization? How is it possible to avoid that our trademark becomes vulgarized and, in the worst hypothesis, it is revoked?

A registered trademark can be revoked if it becomes vulgarized, namely if – initially correctly perceived as an indicator of provenance of the products or services from a specific undertaking – it becomes the generic name of the entire category of products or services as time goes by.

In other words, if the so-called “vulgarization” phenomenon occurs, the public no longer perceives the link between the trademark and its owner, but it believes that the mark (be it a word, an image of something else) generically indicates an entire category of products (or services). The mark becomes generic name of the product (or service) for which it is registered.

In such cases, the brand has lost its value because it has lost its distinctive capacity. The vulgarized trademark loses any connection with the company and becomes the common name identifying all products (or services) of the same kind.

Vulgarization of trademark and case-law

The Article 13, 4) of the Italian Industrial Property Code provides that:

“A trademark is revoked if, as a consequence of any actions or of the inactivity of its holder, it has become in the trade the common name of a product or service or if it has lost its distinctive character”.

Similarly, Article 58, 1 b) of the EU Regulation N. 2017/1001 provides that:

“The rights of the proprietor of the EU trademark shall be declared to be revoked…if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered”.

The case Kornspitz

You can find here below what stated by the Court of Justice in reference to the case of the mark Kornspitz and its vulgarization.

The Court of Justice has been asked to provide its own interpretation on Article 12, paragraph 2, letter a) of Directive of the European Parliament and of the Council , according to which:

“Without prejudice to paragraph 1, a trademark shall be liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered”.

The fact on which is based the decision of the Court of Justice is shortly summarized as follows:

The Austrian company Backaldrin registered Austrian trademark KORNSPITZ (denominative) for goods in class 30. This company produced, under that trademark, a baking mix which it supplies primarily to bakers, who turned such mix into a bread roll with a particular shape (oblong with pointed ends), then sold, in fact, with the name of KORNSPITZ.

Backaldrin consented to the use of that trademark by those bakers and the foodstuffs distributors supplied by them in the sale of that bread roll. The bakers and distributors of this product, however, did not care to inform the buyers of these products that KORNSPITZ was a registered trademark owned by Backaldrin; as a result, the end users of this product perceived that name as the generic name of the product.

The Court of Justice was asked to rule on the following three issues:

1. Has a trademark become “the common name (in the trade) for a product or service within the meaning of Article 12, 2, a) of Directive 2008/95 where
   • Although traders know that mark constitutes an indication of origin they do not generally disclose this to end users and
   • “inter alia) on these grounds, end users no longer understand the trademark as an indication of origin but as the common name for goods or services in respect of which the trademark is registered
2. Can the conduct of a proprietor be regarded as “inactivity” simply if the proprietor of the trademark remains inactive notwithstanding the fact that traders do not inform customers that the name is a registered trademark?
3. If, as a consequence of act or inactivity of the proprietor, a trademark has become the common name for end users, but not in the trade, is that trademark liable to be revoked if, and only if, end consumers have to use this name because there are no equivalent alternatives?

The Court of Justice responded affirmatively to all three questions submitted to its examination, ruling that:

“1) Article 12,2 a) of Directive 2008/95…must be interpreted as meaning that, in a case such as that at issue in the main proceedings, a trademark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the proprietor, that trademark has become the common name for that product from the point of view solely of end users of the product;

2) Article 12, 2 a) of Directive 2008/95 must be interpreted as meaning that it may be classified as “inactivity” within the meaning of that provision if the proprietor of a trademark does not encourage sellers to make more use of that mark in marketing a product in respect of which the mark is registered;

3) Article 12, 2, a) of Directive 2008/95 must be interpreted as meaning that the revocation of a trademark does not presuppose that it must be ascertained whether there are other names for a product for which that trademark has become the common name in the trade.”

Examples of registered trademarks which become vulgarized over time

There is a category of trademarks which risks the vulgarization, namely the marks which identify new products of a category, for which there do not exist words or adjectives that can describe them.

Some examples of famous trademarks become vulgarized are Corn Flakes, Cellophane, Premaman, Walkman, Rimmel, but also Kleenex, Kamut.

How many of you did use one of these brands as a generic name and not as a trademark?

How to avoid that a trademark is revoked for vulgarization?

It is important that trademark’s owner makes every effort in order to avoid trademark become vulgarized. Concretely, it is necessary that the owner does not use its trademark as generic name of the product, at the same time, it is necessary that defend its trademark in case someone use the mark in a descriptive way; for example, it could be useful to remind in the advertisements that the goods are protected by a registered trademark.

For this purpose, it is interesting to observe Article 12 of the EU trademark Regulation, namely:

“If the reproduction of a EU trademark in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trademark is registered, the publisher of the work shall, at the request of the proprietor of the EU trademark, ensure that the reproduction of the trademark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trademark”.

This is an example of a rule that actually allows to the owner of a EU trademark to oppose to the descriptive use of its trademark and to oppose to vulgarization.

Where the owner has done all the best, namely everything reasonably be expected by him in order to avoid vulgarization, the mark cannot be cancelled.
This is what Ferrero did for the trademark Nutella and 3M for the trademarks Post-it and scotch, which obtained the addition of the ® symbol in the dictionary.

Where the owner has done all the best, namely everything reasonably be expected by him in order to avoid vulgarization, the mark cannot be cancelled.