C-371/02

BJÖRNEKULLA FRUKTINDUSTRIER

OPINION OF ADVOCATE GENERAL LÉGER delivered on 13 November 2003 1

1. How to assess whether a trade mark has I — Legal background become a common name in the trade for a product or service in respect of which it has been registered, with the result that the trade mark may be revoked? Should such a finding be based only on the perceptions of persons in the trade who deal in those types A — Community legislation of products or services commercially or should it also be based on the perceptions of the relevant consumers?

3. The Directive represents the first steps taken to approximate the national laws relating to trade marks, and its purpose is to put an end to disparities in this field, which may impede the free movement of goods and freedom to provide services and may distort competition within the com- mon market, and which most directly affect the functioning of that market. 3

2. Those are, in substance, the questions referred by the Svea hovrätt (Svea Court of Appeal), Sweden, in a dispute between two economic operators regarding a word mark relating to a food product which is com- monly consumed in Sweden. By these 4. To that end, the Directive provides that questions, the national court asks the Court the conditions for obtaining and continuing to interpret, for the first time, the provisions to hold a registered trade mark should, in of Article 12(2)(a) of the First Council general, be identical in all Member States Directive 89/104/EEC of 21 December and that trade marks which have been duly 1988 to approximate the laws of the registered should enjoy the same protec- Member States relating to trade marks. 2 tion. 4

10. As regards the protection of trade marks, Article 5(1) of the Directive sets out the principle that a registered trade mark confers on the proprietor exclusive rights in relation to the specified goods or 7. This is the case inter alia where a trade services, entitling him to a monopoly right mark is devoid of any distinctive charac- in the registered sign as a trade mark, ter, 6aswell as where trade marks are without limit of time. 'descriptive', that is to say when they '... consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin or the time of produc- tion of the goods or of rendering the service, or other characteristics of the goods or service'. 7 11. Article 12 of the Directive lists three separate cases in which the rights of the holder of a trade mark may be revoked. 5 — This condition reflects the function of affording protection by a registered trade mark which, as indicated in the 10th recital in the preamble to the Directive, is in particular to guarantee the trade mark as an indication of origin. 6 — Article 3(1)(b) of the Directive. 8 — Article 3(1)(d) of the Directive. 7 — Article 3(1)(c) of the Directive. 9 — The first sentence of Article 3(3) of the Directive.

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12. One of these is specified in Article 12 B — National legislation (2)(a) of the Directive. It applies where, 'after the date on which [a trade mark] was registered, in consequence of acts or inac- tivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered'. It 15. Article 25 of the Swedish Trade Marks is those provisions of the Directive whose Law 1960:644 of 2 December 1960, as interpretation is requested by the national amended for the purposes of implementing court. the Directive, states that a trade mark may be revoked if it no longer has a distinctive character.

17. That statement is echoed in the report of the varumärkes- och firmautredning 14. The provisions of the Regulation relat- (Working Group on Trade Marks and ing to the obtaining, protection and revoca- Business Names), which states that 'it is tion of rights conferred by a trade mark are not sufficient for a considerable proportion the same as, or at least substantially similar of the relevant class of persons to perceive to, those of the Directive in that regard. 12 the trade mark as a freely available description, as long as a significant number of those who deal most closely with the 10 — OJ 1994 L 11, p. 1 (hereinafter 'the Regulation'). product perceive the trade mark as having a 11 — Article 1(2) of the Regulation. distinctive character'. 14 It goes on to say 12 — Thus, Article 4 of the Regulation reproduces the provisions of Article 2 of the Directive as regards the signs of which a trade mark may consist. Article 7 reproduces the provi- sions of Article 3 relating to the grounds for refusal or invalidity, Article 9 reproduces the provisions of Article 5 concerning the rights conferred by a trade mark, and, 13 — Bill 1960:167, cited in the order for reference (p. 6). lastly, Article 50 reproduces Article 12 relating to the 14 — Extracts from the 'Statens offentliga utredningar' 1958:10 grounds for revocation of a trade mark. (pp. 169 and 170), cited in the order for reference (p. 5).

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that 'in that regard, it is the perception was that the trade mark had lost its within the upstream distribution stages, in distinctive character since, in its submission, the wholesale trade, in the purchasing the word 'Bostongurka' is now considered sections of department stores and retail to be a generic term for chopped pickled businesses, etc., which is conclusive, rather gherkins. It referred in that regard to two than that of sales staff in retail shops or of consumer surveys in which the majority of consumers'. 15 those questioned had considered that the term 'Bostongurka' could be freely used by any producer of chopped pickled gherkins.

IV — Analysis

24. Procordia submitted that the travaux préparatoires for the Directive and its wording, in particular when the various language versions were compared, showed that the relevant class of persons is those who deal with the product commercially. 26. The main issue raised by the question referred by the national court is whether Article 12(2)(a) of the Directive should be interpreted as meaning that in order to assess whether a trade mark has become a common name in the trade for a product in respect of which the mark is registered, with the result that the trade mark may be I I I— The question referred for a pre- revoked, account should be taken of the liminary ruling perception only of those in the trade who deal with the type of goods commercially, or whether the perception of consumers of that type of goods is also relevant. 25. In the light of the parties' submissions, the Svea hovrätt decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

27. This question applies particularly where the goods in question pass through several trade sectors before reaching the 'In cases where a product is handled at consumer or end users, that is to say that its several stages before it reaches the con- commercialisation follows a route which sumer what is or are, under Article 12(2)(a) involves several successive intermediaries, of the Trade Mark Directive, the relevant such as distributors and retailers.

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28. In order to answer that question, in mark has become a common name, the first accordance with the methods of interpreta- question is whether, in the light of the tion of the Court, the wording of the wording of the provisions cited above, it is Directive, in particular in its different possible to identify the relevant class(es) in language versions, its general scheme and that regard. its objectives must be considered in turn. 16

33. Furthermore, contrary to what Procor- dia and the Swedish Government argue, no conclusive answer lies in the fact that Article 12(2)(a) of the Directive uses the 30. The question which lies at the heart of expression 'in the trade', rather than the the debate in this case is that of the meaning words 'on the part of the public', which of the expression 'in the trade', which is appear in Articles 4(1)(b) and 5(1)(b) of the used in Article 12(2)(a). Assuming that this Directive. Like the Commission, I am not expression refers to the relevant class(es) of convinced that these two expressions persons whose point of view is to be taken require to be contrasted. In any event, it into account in assessing whether a trade would be wrong to think that the expres- sion 'on the part of the public' refers only to consumers and excludes persons in the trade. Although, according to settled case- 16 — See, inter alia, Case C-372/88 Cricket St Thomas [1990] law, 'the perception of marks in the mind of ECR I-1345, paragraphs 14 to 23, and Case C-6/98 ARD [1999] ECR I-7599, paragraphs 22 to 27. See also my Opinions in Case C-372/98 Cooke [2000] ECR I-8683, points 24 to 45, and Case C-63/00 Schilling and Nehring [2002] ECR I-4483, points 17, 26 and 27. 17 — Emphasis added. 18 — 85/C 351/05 (OJ 1985 C 351, p. 4).

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the average consumer of the type of goods be considered in isolation, but that, in cases or services in question plays a decisive role of doubt, it should be interpreted and in the global appreciation of the likelihood applied in the light of the versions existing of confusion' within the meaning of Articles in the other ... languages'. 24 4(1)(b) and 5(1)(b) of the Directive, 19 it would be wrong to conclude from that that the role is exclusive, that is to say that the perspective of persons in the trade should be entirely excluded from consideration.

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38. None the less, such an exclusion does 41. What is stated above in relation to the not appear in the other language versions of French version of the Directive would also the Directive. appear to apply to the other versions of the Directive, namely the Spanish, Danish, German, Dutch, Portuguese and Swedish versions. 27

39. The Italian expression 'la generica denominazione commerciale' and the equivalent Greek expression suggest that 42. A comparison of these language ver- the assessment of the generic character of a sions shows that the great majority of them name should be based on the perception of support the proposition that Article 12(2) all persons (those in the trade and con- (a) of the Directive should be interpreted as sumers) who use the term in their commer- meaning that in order to assess whether a cial relations, that is to say in buying and trade mark has become a common name, selling goods and in providing services. the perspective of persons in the trade who deal with the type of goods or services concerned commercially and of the con- sumers of the type of goods or services in question should be taken into account.

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BJORNEKULLA FRUKTINDUSTRIER

B — The general scheme of the Directive 46. Several consequences flow from this principle.

44. According to the settled case-law of the 47. First, signs or indications which are Court, the essential function of the trade incapable of distinguishing the goods or mark is to guarantee the identity of the services of one undertaking from those of origin of the marked goods or service to the other undertakings cannot be registered as consumer or end user by enabling him, a trade mark, or, if they have been without any possibility of confusion, to registered, are liable to be declared invalid. distinguish the product or service from That is the effect of Article 3(1)(b), (c) and others which have another origin and to (d) of the Directive as regards respectively make his choice accordingly. 29 The trade trade marks which are devoid of any mark should thus guarantee the identity of distinctive character, descriptive trade the origin of the marked product, that is to marks, and trade marks which consist say it must offer a guarantee that all the exclusively of signs or indications which goods or services bearing it have originated have become customary in the current under the control of a single undertaking language or in the bona fide and established which is responsible for their quality. 30 practices of the trade.

48. Secondly, where, by the use which has been made of it, a sign has acquired a distinctive character which it did not 45. It is for that reason that Article 2 of the originally have, it may be registered as a Directive lays down the principle that in trade mark, and, if it has already been order to constitute a trade mark, a sign registered, is not liable to be declared must be capable of distinguishing the goods invalid. That is stated in Article 3(3) of or services of one undertaking from those the Directive, by way of qualification to the of other undertakings. 31 rules laid down in Article 3(1)(b), (c) and (d), referred to above.

50. Those provisions apply where the use of a trade mark has become so widespread that the sign which constitutes the trade mark in question has come to designate the kind, the type or the nature of the goods or services covered by the registration rather than the specific goods or services originat- ing from a particular undertaking. That is the case, for example, of the terms 'ther- mos' for an insulated flask, 'walkman' for a portable stereo, 'cellophane' for a transpar- 53. Once it is revoked other operators are ent film manufactured from cellulose allowed freely to use the registered sign. hydrate and used for packaging, and Revocation thus pursues an aim which is in 'aspirin' for a medicine which relieves pain the public interest, namely that signs or and reduces body temperature and which is indications which have become a common made from acetylsalicylic acid. name for goods or services in respect of which registration of a trade mark is applied for, or a trade mark has been registered, may be available to or freely used by all. 33 Like Article 3(1)(c) and (d) of the Directive, Article 12(2)(a) reflects the legitimate objective of not allowing regis- tration of a trade mark to be used to 51. In cases such as those just mentioned, perpetuate exclusive rights over terms that the function of the trade mark as an are generic or commonly associated with indication of origin has been lost. There is goods or services covered by the registra- no longer any need for protection of the tion in question. Each of these provisions sign registered as a trade mark and it is prevents such signs or indications from therefore liable to be revoked. being reserved indefinitely to one under- taking because they have been registered as trade marks.

35 — The Court held that, although it does not refer expressly to the point. Article 3(1)(d) of the Directive only precludes registration of a trade mark where the signs or indications or which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that trade mark is sought (paragraph 31). It is accordingly not sufficient that those signs or indications form part of the current language or the bona fide and established practices of the trade; they 57. In that regard, the wording of Article 3 must also have become the common name for the goods or services to which they relate. (1)(d) of the Directive deserves particular 36 — As regards the definition of the average consumer, see, attention. In order to assess whether a sign inter aha, Lloyd Schuhfabrik Meyer, cited above, para- graph 26. In his Opinion in Merz & Krell, cited above. or an indication has become the common Advocate General Ruiz-Jarabo Colomer emphasised the connection between the average consumer and the current language, within the meaning of Article 3(1)(d) of the Directive (points 51 and 52). 37 — It might be considered that Article 3(1)(d) of the Directive 34 — See, to that effect, with particular reference to trade marks, applies to persons m the trade in question in two capacities, Joined Cases C-427/93, C-429/93 and C-436/93 Bristol- namely both as representing the context in which the bona Mvers Squibb mid Others [1996] ECR I-3457, paragraph fide and established practices of the trade are forged and as 40, and Case C-379/97 Upjohn [1999] ECR I-6927, a section of the population which uses the current paragraph 30. language, in the manner of the average consumer.

60. On the basis of these provisions in the Regulation, the OHIM undertakes a global 62. Article 12(2)(a) of the Directive should assessment of the perspective of the relevant thus be interpreted as meaning that it refers, classes of persons, which varies depending implicitly but necessarily, both to the on the type of goods or services in question. perspective of the average consumer of the Thus, where a mark relates to goods whose type of goods or services concerned and to pattern of consumption is widespread, as that of persons in the trade who deal with may be the case with a food product, the type of goods or services in question particular attention is paid to the meaning commercially. of the term in question in the current language, that is to say not only from the perspective of the average consumer, but 39 — See the decision of the first Cancellation Division of the also that of persons in the trade con- OHIM of 15 December 1999 (C0000901341/1-BSS) cerned.38 Where a mark relates to goods concerning the trade mark 'BSS' relating to ophthalmic pharmaceutical preparations and sterile solutions for or services whose use is limited to a ophthalmic surgery. That Cancellation Division held that

See, lastly, the decision of 38 — See the decision of the Cancellation Division of the OHIM the first Cancellation Division of 11 December 2001 (85C of 13 February 2002 (133C 000372920/1) concerning the 000703579/1) concerning the trade mark 'DLC' relating to trade mark 'Bruschetta' relating to certain food products or razors and razor blades, utensils and various accessories associated services. Based on the fact that the word for those goods. Relying on several articles appearing in 'Bruschetta' appears in dictionaries and is regularly used various periodicals and on a scientific encyclopaedia, that on the Internet, the Cancellation Division held that the division of the OHIM held that the term in question was an word was clearly used, at least in Italy, to designate an established generic expression in the commercial area of Italian dish made of a slice of toasted bread served with metallurgy and not in purely academic circles to designate garlic, oil, tomato or other sauces, with the result that it an industrial product called 'diamond like carbon', which was a common term in everyday language. Accordingly, was much valued for manufacturing cutting implements, the application for cancellation of the trade mark was held such as those covered by the registration of tne trade mark to be well founded. concerned.

64. In my opinion, this analysis is sup- ported by the interpretation given by the Court to Article 3(1)(c) and (3) of the Directive. 67. The Court was accordingly making it clear that the descriptive character of a trade mark (at the time of its registration) must be assessed globally, taking into account the perspective of all relevant classes of persons, that is to say both that of the average consumer of the type of goods concerned and of persons in the trade 65. It should be noted that Article 3(1 )(c) who deal with the type of goods concerned of the Directive states that 'the following commercially. shall not be registered or if registered shall be liable to be declared invalid: ... trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical ori- gin, or the time of production of the goods 68. This global assessment of the nature of or of rendering of the service, or other a trade mark has also been held to apply characteristics of the goods or service'.

41 — Paragraph 29, emphasis added. 40 — Emphasis added. 42 — Ibid., paragraph 30.

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when determining whether a sign which did 71. The Court pointed out that in order for not originally have a distinctive character the requirement laid down in Article 3(3) of has acquired that character following the the Directive to be satisfied, the relevant use which has been made of it, so that it class of persons, or at least a significant may be registered as a trade mark in terms proportion thereof, must identify goods as of Article 3(3) of the Directive. originating from a particular undertaking because of the trade mark. It added that such a conclusion could not be reached solely by reference to general, abstract, data such as predetermined percentages.45

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74. The expression 'in the trade', which where the revocation is based on the generic appears in Article 3(1)(c) of the Directive, is character of the mark. It may be assumed in also found in Article 12(2)(a) of that such a case that the proprietor will have directive. Both logically and for reasons of invested significant sums in order to exploit legal certainty, it may be assumed that the the mark and to promote it in the market, expression in question should be given the particularly through advertising, to such a same meaning in both provisions. 47 point that it has become the common name for the type of products or services in question.

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goods and freedom to provide services and would mean opening the door to certain may distort competition within the com- practices that might distort competition mon market, and which most directly affect within the market. the functioning of that market. 48

82. There must be a strong risk that some economic operators, who deal commer- 80. As the Court has held on several cially with goods or services that are the occasions, trade mark rights 'constitute an same as or similar to those covered by a essential element in the system of undis- trade mark, or who wish to enter that torted competition which the Treaty is market, might resort to bringing proceed- intended to establish [and maintain]'.49By ings for revocation of the trade mark solely guaranteeing the identity of the origin of the in order to establish themselves in that marked goods or services to the consumer, market, thereby doing serious harm to the trade marks contribute towards the crea- interests of their competitor (the proprietor tion of a system of undistorted competition of the trade mark) and benefiting impro- in which undertakings must be able to perly from his efforts and investment in attract and retain customers by the quality promoting trade in the goods or services in of their products or services. 50 question. The proprietor of the trade mark would be entitled to expect that he would receive lasting benefits from his efforts and investment, since a registered trade mark confers on its proprietor an exclusive monopoly, allowing him to claim the registered sign as a trade mark without limit of time.

85. As has already been mentioned, the Court has consistently held that this func- tion consists in guaranteeing the identity of the marked goods or service to the con- sumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or service from others which have another origin. 52 88. Accordingly, the answer to the ques- tion referred should be that Article 12(2)(a) of the Directive should be interpreted as meaning that in order to assess whether a trade mark has become the common name in the trade for a product for which that trade mark is registered, with the result that 86. It is in the light of this essential the trade mark may be revoked, there function of a trade mark, which underlies should be taken into account globally both the Directive, that an assessment should be the perspective of consumers or end users of the type of goods or services concerned, and that of the persons in the trade who deal 51 — See point 72 or the Opinion and the examples given. with that type of goods or services commer- 52 — See, inter alia, Merz & Krell, cited above, paragraph 22. cially.

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V — Conclusion

89. In the light of the foregoing considerations, I propose that the Court should answer as follows the question referred for a preliminary ruling by the Svea hovrätt:

Article 12(2)(a) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks should be interpreted as meaning that in order to assess whether a trade mark has become the common name in the trade for a product for which that trade mark is registered, with the result that the trade mark may be revoked, there should be taken into account globally both the perspective of consumers or end users of the type of goods or services concerned, and that of the persons in the trade who deal with that type of goods or services commercially.