ECJ rules on who decides when a mark becomes generic

In a case referred by the Swedish Court of Appeal, the European Court of Justice (ECJ) has ruled that in determining whether a mark has become generic, the opinion of consumers and, in certain circumstances, traders will be relevant.

The case stems from the request by food producer Björnekulla Fruktindustrier AB to revoke Procordia Food AB's Swedish registration of the mark BOSTONGURKA for chopped pickled gherkins. Björnekulla alleged that BOSTONGURKA had become generic for the goods for which it was registered. It based its complaint on two consumer surveys. Procordia contested the complaint and submitted a survey of leading operators in the grocery, mass catering and food sales sectors that reached the opposite conclusion (ie, that BOSTONGURKA is not generic).

The first instance court dismissed the complaint, holding that Björnekulla had failed to prove that the trademark no longer had any distinctive character. However, on appeal, the court held that the initial drafting of the Swedish Trademarks Act suggests that the relevant persons to consider when deciding this issue are those who deal commercially with the product. The court raised the question of whether this interpretation of the Swedish law would be consistent with the Community Trademark Directive. Accordingly, the Court of Appeal referred the case to the ECJ.

The ECJ examined closely the wording of Article 12(2)(a) of the Community Trademark Directive. It found that in the English and Finnish versions, the expressions used refer to trade circles only, whereas in the other languages of the European Union - not yet considering the new languages following the enlargement of May 1 - the expressions used refer to both consumers and operators who distribute the product. The ECJ found that the interpretation of the majority of the EU languages better corresponded to the objectives of the directive. Accordingly, it concluded that in determining whether a mark has become generic, the opinion of consumers and, "depending on the features of the market concerned, all those in the trade who deal with that product commercially" will be relevant.

It now seems clear that consumers play a decisive role in determining when a mark has become generic, but the role of traders remains unclear. One can imagine a situation where consumers would be of no relevance because the products are not intended for and not sold to consumers. In such a case, only the opinion of the relevant traders would count. In the case of consumer products, it is difficult to imagine a market situation where the opinion of traders would be excluded. A future question to the ECJ is likely to be which market features will exclude the relevance of those who deal with the product commercially.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna