Everyone knows the trade mark “FlipFlop” for toe separator sandals. A recent judgement by the Higher Regional Court in Zweibrücken/ Germany will not change this. But as a result of the judgement, the sign “FlipFlop” loses its protection as a registered trademark.
Cancellation application by Havaianas
The suppliers of toe separator sandals labelled “Havaianas” requested to cancel the German word mark “FlipFlop”, which was registered in 1997 (including in class 25 for “footwear”). They argued that the sign “FlipFlop” is a purely descriptive indication of goods and is no longer perceived as an indication of a company.
A trade mark must be distinctive in order to fulfill its function as an indication of origin, namely to distinguish the goods/services of one company from those of another. If it loses this function because it has become a common term for a product/service, a cancellation can be request according to § 49 para. 2 no. 1 MarkenG.
The Higher Regional Court in Zweibrücken granted the application for consent to cancellation. According to the survey of the public (retailers and consumers) carried out by the expert, the trade mark had become a common name for toe separator sandals / footwear. Only a completely insignificant proportion of the public considered the sign as indication of origin. According to the survey, only 14% of traders still associated the trade mark with the company, compared to around 4% of consumers.
The Higher Regional Court of Düsseldorf already addressed the question of whether “flip-flop” had become a common name for toe separator sandals in 2011. At that time, the answer was in the negative. The mere fact that “FlipFlop” was more frequently used as a term for thong sandals is not sufficient. In order to affirm the existence of a common name, it is necessary that only an insignificant part of the public understands it as a designation of origin.
At the point
The registered trade mark is a monopoly right that can represent a considerable value for the owner. It is essential that the owner protects his right and also takes action against use by unauthorised persons. Otherwise there is a risk of losing the right. Even if there are high requirements for the loss of the right, it is very important that trademarks are actively defended by the trade mark owner, in particular well-known trademarks.