A gloomy day, a brightly lit café and a hot cup of tea – these are the best conditions for enjoying one of the world’s best-loved and most replicated desserts: the Sachertorte; well, there are those who, like Nanni Moretti in Bianca (1984), would not give it up even on a hot day in July.
1. Origins and vicissitudes of Sachertorte
While there are numerous versions of this cake, the bucketlist of pastry enthusiasts cannot lack a ticket to Vienna, the city where the recipe for this iconic cake was conceived.
Not many people will be familiar with the vicissitudes that unfolded since 1832, when the very young Franz Sacher first proposed his Sachertorte to diplomat Klemens von Metternich, achieving tremendous success.
Years later, a dispute would begin over the paternity of the Austrian cake – and in particular over the trademark ‘original sachertorte’ – between two companies, the Hotel Sacher (founded by Franz’s son, Eduard Sacher) and Demel (a café where Eduard himself perfected his father’s recipe); however, in the 1960s, the two parties agreed to create two traditions: the ‘original sachertorte’ the first, the ‘Eduard Sacher Torte’ the second – both with their own merits.
What is certain is that, despite the moral value of not only a family tradition but a national one, when reading the name Sacher, we all think of the perfect chocolate icing that wraps the sponge cake and the thin layer of apricot jam that fills it.
Such a long-contested trademark as Sacher, which generates an immense turnover, is now placed on countless cakes and shop windows – from the smallest local bakeries to the largest supermarket chains – and has been crowding cooking blogs for years.
However, such a huge reputation for a simple cake soon presented its bill. And the price that had to be paid in terms of legal protection was steep: due to the vulgarisation of the term, the word Sacher is no longer protected as a trademark for cakes.
2. Trademark vulgarisation: as rare as it seems?
The so-called ‘vulgarisation’ or ‘ genericide’ of a trade mark is a phenomenon that denotes the loss of distinctive character, i.e. the circumstance whereby a registered trade mark ends up being used in the course of trade as a generic designation of the product or service to which it refers.
It is worth noting that the main function of a trade mark is to distinguish goods and services as originating from a particular business source.
Although distinctiveness is therefore a prerequisite for the sign to be registered, its nature is far from static: in fact, an originally ‘strong’[1] or ‘renowned’ trade mark, even when it becomes synonymous with ‘excellence’[2], as in the present case, may lose its distinctiveness over time, until it exhausts its function.
In certain cases, the trade mark proprietor’s behaviour (i.e. his activity or inactivity) may nullify the time and resources spent to protect the mark and thus cause it to lapse.
While omissive conduct consists mainly of a lack of or inadequate reaction to the infringing phenomena of one’s own trade mark, active conduct concerns hypotheses in which it is the proprietor himself who promotes use in a descriptive function, for example through intensive marketing campaigns that employ the trade mark to directly identify the product.
On one hand, there are many companies that react to infringements of their rights through warnings or legal action; an example is Google’s strenuous fight against the inclusion of the term ‘googling’ in dictionaries, aimed precisely at preventing its vulgarisation.
On the other hand, some prefer to focus on educating consumers about the presence of a registered trademark on widely used words; think of the campaign to promote the correct use of the trademark ‘Kleenex’, which in Anglo-Saxon countries has become a synonym for paper tissue, regardless of the company that produces it.
Experience has shown, however, that a trade mark can turn into a generic name even for facts that are beyond the owner’s control.
Even doctrine has noted over the years that this phenomenon often originated from the diffusion of extremely innovative products for which there was not yet a suitable identifying term among consumers – e.g. Cellophane, Thermos, Velcro.
Sometimes, musicality and convenience can also lead a consumer to refer to a product by its trademark… After all, who is not guilty of using Scotch (and not just adhesive tape), or Scottex (and not just paper towels)?
Hence, these positive characteristics – popularity, innovativeness, musicality, convenience – are both a boast and a risk. If we think of Sacher, we find them all: an extremely successful dessert, innovative when it was created, different from a simple chocolate cake… And with a sound that evokes elegance and classicism.
As much as its origin is coloured by intense trademark protection, the massive number of competitors using the word to describe that type of cake makes it difficult for the proprietor to respond promptly on one hand, and on the other raises doubts about its distinctiveness.
Indeed, if we order it from the menu of any restaurant in the world, can we as consumers really expect under any circumstances to receive the cake packaged by the most exclusive hotel in Vienna?
Our concerns are not unknown even to the examiners of the EUIPO, who on several occasions, and most recently in 2023, refused the registration of the trademarks ‘Sacher’ and ‘original sachertorte’ requested by the famous hotel on the grounds that they lacked distinctive character in relation to confectionery products.[3]
The office needed only to do some research on the Internet to consider that these signs would be perceived by consumers as merely descriptive of a type of cake or cake prepared according to one of the various recipes that have spread over the years and are also portrayed in various dictionaries.[4]
Looking at the epilogue of the history of the Sacher trademark, we can nevertheless praise the passion that, especially at the beginning, led the Viennese family to defend its gem and preserve its recipe to this day, even through the instruments of intellectual property, at a time when these assets did not receive the same attention they do today.
3. Conclusions – Marketing and Intellectual Property: A Winning Pair
Our reflection is ultimately intended to draw attention to the dynamic nature of trade mark law and its interaction with the underlying economic reality.
Indeed, when faced with a word that has become generic in commerce, a right anchored, inter alia, to distinctiveness, would completely lose its basis – thus depriving the rest of competitors of a common way of indicating a certain type of product.
The vicissitudes surrounding the Sacher cake call for questioning the nature of the monopoly that the law attaches to the trade mark itself (before it is too late!).
In fact, a trade mark that supersedes the name of an article may prima facie appear to be a brilliant marketing move, but in the long run proves to be a brand protection nightmare.
Marketing, the act of satisfying and retaining one’s customers[1], of understanding one’s audience, is certainly at the root of the success of any business and is essential, especially in the case of goods, such as the Sacher cake, with a particular appeal.
Intellectual property, and in this case trademarks, eventually ensure that the same consumers captured by advertising know where that product originates from and can distinguish it from imitations.
The union of the two disciplines makes it possible to convey messages about the identity, history and values of one’s company and to determine to some extent its rise or fall. Therefore, when these two branches go in different directions, the whole tree suffers.
For these reasons, for a trade mark ‘in danger’ of vulgarisation, both adequate legal support and an appropriate marketing strategy are crucial, tools that are now indispensable for the longevity of these rights and the innovativeness of any business.
[1] App. Milano 21-3-1980.
[2] Trib. Milano 1-2-2010, GADI 10, 382.
[3] See for instance EUIPO Notifications of provisional partial refusal of 22/12/2017 and of 08/02/2023
[4] Sachertorte, n.: a rich chocolate cake of a kind originally made in Vienna (da Oxford English Dictionary).
[5] “The Role of Customers in Marketing | Introduction to Business”. courses.lumenlearning.com. Retrieved 11 August 2021.
