Could the owners of the “Teflon” brand escape the dreaded “generic” curse and retain their Community Trade Mark?
Who: Teflon and the Court of Appeal in Den Bosch, Netherlands
When: Spring 2001
Where: Den Bosch
The owners of the Teflon brand appealed a decision of the Breda District Court to the effect that the Teflon brand had become generic and its registration must therefore lapse. The District Court based its decision largely on the fact that the word “Teflon” appeared in the dictionary and had therefore on the face of it become part of ordinary language. The Court of Appeal upheld the appeal and the trade mark registration. It was clear from the evidence that the brand owner had actively policed its rights. Also, the wording of the relevant Community Trade Mark (the registered trade mark obtainable on a one stop basis across the European Union) Regulation talked about lapsing if and when a brand name became commonly used in the trade to describe the products for which it was registered. Applying this test, a dictionary entry was not of itself sufficient to render a name “commonly used in the trade.” So Teflon survived as a registered trade mark.
Why this matters:
The terminal “generic” syndrome strikes fear in the hearts of all brand owners. That way have gone such distinguished former proprietary brands as Escalator and Linoleum. Paradoxically the syndrome is most prone to strike when a brand is most successful. Policing action against unauthorised use is essential, as is careful representation of the brand whenever it appears. For example consistent use of the “R” in a circle (if the mark is registered in the country of use) and “TM” in a circle (if the mark is not registered) are advisable. Many brand owners also have comprehensive house guidelines governing where and how the brand is represented. These, together with a detailed dossier of all action taken against unauthorised users, will be worth their weight in gold in actions such as this one successfully defended by Teflon’s owners.