ECJ confirms cancellation of BSS registration

In Alcon Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld the cancellation of the mark BSS on the grounds that the sign had become customary in the current language in respect of the goods to which it applies within the meaning of Article 7(1)(d) of the Community Trademark Regulation.

On April 1 1996 Alcon Inc, a manufacturer of eye-care products, applied to register BSS as a Community trademark for "ophthalmic pharmaceutical preparations and sterile solutions for ophthalmic surgery" in Class 5 of the Nice Classification. The mark proceeded to registration on August 7 1998. On December 7 1998 Dr Robert Winzer Pharma GmbH (Winzer Pharma), a German competitor, filed an application with the OHIM seeking a declaration that the mark was invalid. Winzer Pharma claimed that BSS is descriptive of the goods to which it applies, which precludes it from registration pursuant to Article 7(1)(d). It submitted evidence that BSS stands for 'balanced salt solution' or 'buffered saline solution', which was accepted by the OHIM Cancellation Division. Accordingly, the Cancellation Division upheld Winzer Pharma's application, as did the Court of First Instance (CFI) (see Alcon's mark cancelled, despite attempts to protect distinctiveness).

On further appeal, the ECJ affirmed. It upheld the CFI ruling that in deciding whether a mark is customary under Article 7(1)(d), the mark can only be assessed (i) by reference to the goods or services in respect of which registration is sought, even though Article 7 does not explicitly refer to those goods and services, and (ii) on the basis of the target public's perception of the sign. Here, the ECJ emphasized that it was not the descriptive nature of the mark that was decisive, but current usage in the sectors covering trade in those goods according to the principle established in the Merz & Krell Case. Alcon was also unsuccessful in convincing the ECJ that BSS had acquired distinctive character through use according to Articles 7(3) and 51(2).

Accordingly, the ECJ dismissed the appeal.

It is worth noting that the ECJ also affirmed previous decisions in which it held that findings of fact are within the CFI's sole jurisdiction and may not be challenged on appeal, unless the CFI distorted the clear sense of the evidence put before it (see Vidrányi v Commission of the European Communities and Dorsch Consult Ingenieurgesellschaft mbH v Council of the European Union).

Stephan N Schneller, Maiwald Patentanwalts GmbH, Munich