WHEN A TRADE MARK GETS IN A PICKLE

Bjornekulla Fruktindustrier Aktiebolag v Procordia Food Aktiebolag Case C-371/02 (blogged by the IPKat, 13 November) was a reference to the European Court of Justice for a preliminary ruling by the Svea Hovratt, Sweden, on an appeal from the Stockholm District Court (reported in [2002] ETMR 464). Swedish company Procordia owned the BOSTONGURKA trade mark for chopped pickled gherkins. Another Swedish company, Bjornekulla, which produced pickled gherkins, picked beetroot and similar items, sought revocation of the BOSTONGURKA mark, claiming it had lost its distinctive character and was now a generic term for chopped pickled gherkins. To support its argument, Bjornekulla submitted two consumer studies which showed that the majority of persons interviewed believed that the term "Bostongurka" could be freely used to describe any brand of pickled chopped gherkins. Procordia submitted its own report, based on the trade, showing that half of those interviewed recognised the BOSTONGURKA mark as a trade mark for pickled chopped gherkins. The revocation suit was dismissed since Bjornekulla failed to show the mark had lost its distinctive character. Bjornekulla appealed: if the public's perception of the mark was decisive in assessing whether a mark could be registered and whether a risk of confusion likely to constitute the infringement of the mark existed, the same was true for revocation. Procordia disagreed: the relevant public, it said, consisted of those involved in the marketing of the product. The court therefore decided to stay proceedings and referred the question to the ECJ.

In his Opinion, Advocate General Leger advised the ECJ that Article 12(2)(a) of the harmonisation directive, Directive 89/104, requires that, in order to determine whether a mark had become a common name in the marketing of a product for which that mark was registered, so that its owner was at risk of losing his rights over that mark, a global appreciation had to be made both from the point of view of the consumers or end users as from the viewpoint of the businesses which marketed those goods or services.

If this Opinion is accepted by the ECJ, the IPKat is curious to know how trial courts will apply it in situations in which, both among consumers and in trade circles, there is some identification of the disputed mark as being a trade mark but the preponderant majority in each case regard it as a generic term.

Advocate General Leger's Opinion here in French, German, Italian, Portuguese and Finnish
Original BOSTONGURKA gherkins here
Other pickled gherkins here, here and here