The Defendant's EU trademark registration bared a false tradition claim which was revoked due to misleading use. The full decision can be found here.
If a trademark is misleading in respect of characteristics of the products for which the trademark shall be used, it must not be registered. However, sometimes the message communicated by the trademark is correct at the time of registration but later becomes false. This can happen, for instance, when the trademark is transferred to another owner whose products do not have such characteristics. The described case concerned revocation of an EU trademark falsely referring to a company tradition ("since 1875"). In its decision, the Austrian Supreme Court made it clear that if an EUTM refers to a company tradition which no longer applies to the producer of the products at issue anymore, the trademark shall be revoked. This applies when due to the tradition claim the customers expect certain characteristics of the products which the products no longer have. In the case at hand, significant production experience and proven quality as well as the manufacturing tradition of the previous craftmen's company, were decisive.
"Following EU trademark law, anybody can apply for revocation of an EU trademark registration when use of the trademark is misleading, but there was, as yet, no case law determining the application of such rule in cases like the one just decided" says Schoenherr IP Partner Christian Schumacher, who successfully represented his client, an Austrian wine cask crafter following the long tradition of its family of craftsmen, requesting EU-wide revocation via a counterclaim at the Commercial Court of Vienna.
The Schoenherr team which achieved the Supreme Court rulings consisted of Christian Schumacher (partner; lead) and Marie Hornyik (associate).