Posts by: Claus Marcussen | (2) posts

Fatal success

When introducing a product, the company must have as a goal or at least a hope that the trademark related to the product will become known. Some may even pray for well known or famous. They may get exactly what they hope for and some of those may find themselves cursing the day, when it happens. 

A trademark may lose its ability to identify the source for the product and instead become the product itself. Like aspirin, which used to be a worldwide trademark but now has lost its trademark status, in some countries. Aspirin is now a generic term for the product “pain killer”. The risk is especially big, when you also invent the product, e.g. Vaseline.

When a trademark loses this ability, a generic trademark is the result (also known as a genericised trademark or proprietary eponym). Obviously, the owner of the trademark fears this evolution as it also means that everybody can use the used-to-be-trademark-but-now-demoted-to-dictionary-word.

Famous trademarks, of which some of them have been declared genericised in some countries: Thermos, Yo-yo, Linoleum, Jeep, Xerox, Stetson, Plexiglas, Kleenex, Velcro, Post-it, Flamingo, Jacuzzi, Mærkat, Frisbee, Cellofan, Gore-Tex, Adrenalin, Bobcat, Dictaphone, to google something, Hacky Sack, Teflon, Vaseline, Rollerblades.

Escalator was a trademark for Otis Elevator Company, more or less until Otis used the following words in a commercial “the latest in elevator and escalator design” thereby telling about their Escalator product by using the trademark as a describing word; the ultimate sin when you are dealing with a famous mark. From then on, rescue of the trademark was not really possible.

How to minimize the risk: Only use the trademark in its registered form, e.g. never photoshop anything, never sell two Jet Skis, never use a possessive term such as the Frisbee’s color. Also consider correcting campaigns to educate customers, businesses and dictionaries combined with effectively enforcing your trademark rights. Add a describing word whenever you use your trademark such as walkman® music player, just like Nintendo started heavy co-use of ”game console” – you may have to invent a new word in the process. Thereby you help people respect your trademark, and you can document later – if needed – that you have done everything possible to become known, but not too known!

Claus Marcussen, Attorney at Law

Big Bucks Bunny – Decision on Protection of 3-D Community Trademarks in the EU

The renowned chocolate manufacturer, Lindt & Sprüngli AG, had filed an application for the protection of their gold rabbit with a red ribbon as a 3-D Community trademark with OHIM (the Community trademarks office). The list of goods comprised “chocolate and chocolate products” in international class 30.

A three-dimensional mark is a mark consisting of a three-dimensional shape (including containers, packaging and the product itself).

In the bunny case (C-98/11 P), OHIM rejected the application stating that the 3-D figure did not possess sufficient distinctiveness to become registered. In other words, the shape and appearance of the 3-D trademark were considered too common and generic to become anybody’s exclusive right.

Lindt & Sprüngli, not happy with this decision, took the matter to the General Court, which came to the same conclusion as the administrative decision rendered by OHIM. Lindt filed an appeal with the Court of Justice, and they have recently come to a conclusion.

The Court of Justice agrees with the other instances and decided in favor of OHIM: The gold rabbit with a red ribbon simply does not qualify for the exclusive right, which a 3-D Community trademark registration conveys.

If Lindt & Sprüngli had added text on the bunny, such as “Lindt”, the trademark most likely would have become registered. The company also has applications and registrations to this effect. Such registrations, however, are not as strong in a potential trademark conflict, since the comparison between Lindt’s bunny and a competing bunny would have required a comparison between the text elements as well.

Finally, to complete the tale, Lindt also tried arguing before OHIM and the two courts that the shape and appearance of the gold bunny are so known to the consumers of the Community that the 3-D figure had acquired distinctiveness as a result of the use of the 3-D trademark. This argument also failed with the judges, since Lindt did not file sufficient evidence to show that the trademark was sufficiently known to consumers in all 27 Community countries.

Claus Marcussen, Attorney at Law