Alcon's mark cancelled, despite attempts to protect distinctiveness

European Union

In Alcon Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld an OHIM decision, cancelling Alcon's Community trademark BSS. The court agreed that (i) BSS - an acronym for 'balanced salt solution' - has become customary in the current language or established practices of the ophthalmic industry, and (ii) Alcon had not proved that the term has acquired distinctiveness through use.

Alcon, a US healthcare company specializing in ophthalmic products, created the term 'balanced salt solution' and its acronym 'BSS' in 1959, and has registered the trademark BSS or signs containing those letters in a number of countries. In 1998 it obtained a Community trademark registration for BSS in relation to pharmaceutical preparations, specifically sterile solutions for ophthalmic surgery. Dr Robert Winzer Pharma GmbH, a German company, brought cancellation proceedings before the OHIM, arguing that BSS has become a generic term and therefore cannot be afforded protection as a Community trademark. Both the OHIM's Cancellation Division and Board of Appeal agreed, in spite of evidence presented by Alcon that it has attempted to control other parties' use of BSS. Alcon appealed to the Court of First Instance.

The court affirmed the OHIM's decisions and ordered the cancellation of Alcon's mark. The court cited the European Court of Justice's decision in Merz & Krel, in which it was stated that the question of whether a trademark has become customary (and thereby generic) must be assessed with reference to (i) the goods or services in respect of which registration is sought and, (ii) the target public's perception of the sign. The Court of First Instance held that the relevant target in this case is ophthalmologists and ophthalmic surgeons throughout the European Union, who would be familiar with English scientific terms.

On the basis of evidence submitted by the OHIM and Dr Robert Winzer Pharma, including excerpts from scientific dictionaries, the court accepted that in the perception of the target public, BSS is a generic term for 'balanced salt solution' (or 'buffered saline solution'). The court concluded that Alcon had failed to prove that its attempts to promote the term 'BSS' and to police its usage by others had caused the target public to believe that it is a trademark. These efforts to protect BSS, said the court, did not demonstrate that the term had acquired distinctiveness.

It follows from this decision that in situations where a mark is in danger of becoming a generic term, it is not sufficient for the trademark holder to simply show evidence that it is fighting the dilution of its mark. Trademark owners must, it seems, prove that the target public still perceives the sign to be a trademark.

Michel Draps, Altius, Brussels

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