Slider
8 Mar

Generic name in trade mark. Why it is a very bad idea?

Today I describe an interesting case study. It’s about the case when the generic name has been used in a figurative trade mark. It’s  owner showed that he had exclusive right to the included words: artistic tea. Well, whether or not is this in your opinion the generic name?

generic name

Generic name – definition

Generic name is a designation that, although was initially fancy, and in consequence of the huge popularity has come to be associated by the consumers only with a certain type of product or service.

Such process is formally called degeneration of the trade mark. As a result of market success, such trade marks as aspirin, heroin, and trampoline have become the generic names.

Importantly, the generic name can not be registered as a word trade mark. Although as you read on, such “mistakes” happen.

Generic name is not suitable for distinguishing goods or services. Here’s an example. Talking about aspirin, you are thinking about the type of medicine, and not a type of product of a particular producer.

What is more.

It may even lead to the degeneration of once registered trade mark.

Is artistic tea the generic name?

Ref. Act I ACa 56/14

In the context of what I wrote above, I wanted to describe the interesting case.

The circumstances of the dispute.

In 2012, the tea-maker in the form of spheres, which took the form of a developed flower after the brewing, used the term “artistic tea” and sued another company, also using that term.

The Complainer referred to its earlier right resulting from the registration of the figurative EU trademark “artistic tea”:

generic nameProceedings before the District Court.

The Complainer  demanded inter alia:

– prohibition the Defendant of the use of the disputed trade mark on teas and their packagings,

– withdrawal from the market produced by Defendant teas marked by the disputed trade mark and destroying all packagings.

According to the Complainer , the use by the Defendant of the term “artistic tea” for tea is a violation of the law for registration of his trade mark. And as he raised it is a reputable trademark.

In response to the lawsuit, the Defendant demanded:

– cancellation of the Complainer’s trademark for certain goods (tea);

– prohibition the Complainer of using of his trademark;

– dismissal of the claim in its entirety as completely unfounded.

According to the Defendant, the Complainer’s mark consists of a designation used to mark a specific type of tea. The term “artistic tea” in international trade is considered as generic name.

So it only serves as an information function.

In the opinion of the Defendant, registration by the Complainer of the generic name was made as a result of bad faith, with full awareness of the universality of the above name and its descriptive character. This was aimed at eliminating of the Complainer’s competitors.

Judgment:

The court dismissed both the Complainer’s and the Defendant’s claim.

Grounds:

The term “artistic tea” is generic name, as evidenced by its long-standing practice of using it internationally in international trade.

– Therefore, the trademark of the Complainer is a weak sign. However, it can not be invalidated because, apart from the generic name, the sign also consists of a fancy, distinctive graphic design. Assessed as a whole – a trade mark has distinctive character and it’s protection can be maintained.

– The Defendant does not infringe the rights to the Complainer’s trade mark because he has proved that he began to use the sign at a similar time, but completely independently of the Complainer. These designations are also different in the graphic layer and do not cause associations.

– Therefore the Complainer’s trade mark consists of a generic name, examination of the reputation of this mark would be unfounded.

Appellate Procedure.

The Complainer’s appealed, raising the following:

– Incorrect acceptance by the Court that the term “artistic tea” is generic name and is commonly associated with a particular type of tea.

The appeal was rejected, indicating, inter alia, that:

– The District Court correctly came to the conclusion that the granting the Complainer of the exclusive right for the word sign, used in the course of trade to describe the characteristics of the goods, would lead to disturbances in the course of trade. This would result in the monopolization by one entrepreneur of a sign belonging to the public domain.

My comment.

This dispute illustrates the problems I encounter in my work.

Customers often ask me if it is better to protect the name or company logo. Here we have an example of what problems can arise when registering a figurative trademark. We have a registered trademark, but we are not sure what exactly we protect – name or logo.

Those doubts only disperse the court verdict. Alternatively, the decision of the relevant Office, if anyone applies for the invalidity of the mark.

This dispute also shows that generic name is not easy to locate. I am an example of a person who has an average knowledge of tea. Actually I only distinguish them by color (white, green, red …).

Consequently, the term “artistic tea” does not tell me anything specific. I guess that “tea lover” wasn’t also an expert from the Polish Patent Office, who registered the word trade mark ARTISTIC TEAS for the Complainer. It’s little known fact.

Fot. 1 – TonTip  / CC BY
Fot. 2 – Jack Fussell / CC BY-NC-ND

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl

{ 0 comments… add one now }

Leave a Comment

Previous post:

Next post: