The article considers the rules regarding the development of trade marks into common names of products. EU Law now says that a trade mark that has become the common name of the product in respect of which it is registered can be revoked only if this is the ‘result of acts or inactivity of the proprietor’. This rule is generally interpreted in the sense that if the trade mark holder shows an ‘activity’ in defence of the trade mark (e.g., bringing legal actions against competitors and intermediaries using the trade mark), there is no ground for revocation. This rule comes from the idea that the trade mark becoming generic is something regarding only the trade mark holder and his competitors, without considering the interest of the public. In the light of the interest of the public, there is no reason to ‘save’ the trade mark from become generic, even if the proprietor is strongly (but with no positive result) trying to avoid this. The author identifies the historical reasons for the traditional rule and proposes overcoming it, in the light of the consideration of the interests of the market. The article closes saying that the latest decisions of the EU Court of Justice (Björnekulla and Kornspitz) seem to give a strong push towards a purely objective doctrine of the development of the product’s common name. Keywords Trade mark; trade mark becoming generic; activity of the trade mark holder; revocation
Vincenzo Di Cataldo
The article analyses the points of weakness of a European patent with unitary effect. The new texts create not just one, but two new ‘models’ of patent (the unitary patent and the European patent UPCt-style). They will coexist with the two pre-existing ‘models’ (the old European patent and the national patent), causing difficulties of orientation and choice to the inventors. The unitary patent is not really a unitary title: its regime is a bundle of rules coming from different sources (EU Law, Convention Law, national law), and this creates uncertainties. The new rules have been written without considering the results of the patent practice of recent years, and so the new texts seem a missed opportunity for the modernization of patent law in Europe. A better alternative would be the drafting of an EU Regulation on a new EU Patent which absorbs the European Patent Convention (Munich Convention), and entirely regulating the title without references to international or national law. This new EU Patent should be granted by a new European Patent Office, which should supersede the EPO. The jurisdiction should be given to the national courts, and the EU Court of Justice should be able to take preliminary references. The author argues that this solution is not a strange and difficult one; it is just the solution already chosen for the Community trade mark, Community designs, and Community plant varieties.