Edited by Gustavo Ghidini, Hanns Ullrich and Peter Drahos
Chapter 6: The development of trade marks into common names of products: a strong push towards a purely objective view of language evolution
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
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