Genericide of a trademark can have detrimental consequences to the trademark owners that may lead to the loss of their trademark rights. According to EU legislation two criteria must be met for a trademark to be revoked on this basis (art. 58(1)(b) EUTMR):
– It must have become the generic name for the goods and/or services in respect of which it is registered; and
– The loss of distinctive character must be due to the acts or inactivity of the trademark owner.
In view of the above, it is of great importance that trademark owners pay special attention to the use of their trademark. All efforts should be made to make sure that the trademark is not used in a way that may lead consumers to believe that it is a generic name. To this end, it is advisable to provide guidelines on how to use a mark, so that it is used in a consistent way by all members of the company and also distributors or any third party related to the company.
It is also crucial that trademark owners defend their registered trademark rights in order to enforce their rights.
The General Court (EU) has recently annulled the decision of the Board of Appeal (BoA) of EUIPO in connection with the genericide of the trademark CITY STADE (T-220/23, 07/02/2024). You can find the complete decision here.
The trademark CITY STADE was declared to be valid by the BoA following a claim based on Article 58(1)(b) EUTMR (genericide).
In this case, there was plenty of evidence showing use of the sign CITY STADE as a common name to refer to “one or more multisport fields”. The documents submitted showed use of the sign along with different articles/pronouns and in singular and plural form in a generic manner. Besides this, press articles and dictionaries also referred to the sign in a generic way. In view of the above, the BoA found that the sign had become the generic name in the trade for the goods designated.
Despite the above, the BoA considered that the trademark owner had taken measures to avoid such genericide, so the trademark was not revoked. The BoA based their findings on the fact that the trademark owner had sent three cease and desist letters to defend their trademarks and used the symbol ® systematically. Besides this, some of their catalogues included the heading “our trademarks” on the last page.
The General Court has pointed out that the use of the symbol ® does not render a trademark distinctive per se and cannot be decisive in this case. Although it may prove some efforts on the trademark owner, it must be regarded as an action of limited legal significance.
Besides this, some of the materials produced by the trademark owner showed use of the sign in a generic way, for example, “You work together to create your CITY stadium®”. In view of this, the General Court found that such use proves that the loss of distinctive character can be attributed at least in part to the trademark owner.
The foregoing and the fact that the trademark owner had only sent three letters in defense of their trademark in a period of eight years and that they had not taken any action in connection with the dictionaries and encyclopedia using the expression in a generic way led the Court to find that the two criteria above mentioned are met and the trademark must be revoked.
This decision reminds us that attention must be given to the defense of IP rights, specially when a trademark is at risk of becoming generic. The EU system and its subjective approach to genericide, which requires that the loss of distinctive character is a consequence of the acts or inactivity of the owner, allows trademark owners to react when the public is using the sign as a generic name and take action so that they raise awareness about the fact that it is a registered trademark and not a common name. All these efforts will be taken into consideration if facing a revocation action based on art. 58 (1)(b) EUTMR.
Sara Mojica
Attorney at Law | Spanish Patent and Trademark Attorney
