CUCUMBER CASE HITS EUROPE

In Case C-371/02 Björnekulla Fruktindustrier AB v Procordia AB Björnekulla brought proceedings against Procordia for revocation of the BOSTONGURKA trade mark. It claimed that the trade mark had lost its distinctive character, as it was considered to be a generic name for chopped pickled gherkins. In support of its application, it relied principally on two market research surveys of consumers. Procordia contested that application, citing in particular a market research survey of leading operators in the grocery, mass catering and food stall sectors. Relying principally on the travaux préparatoires for the Swedish Law on Trade Marks, the tingsrätt (District Court) held that the relevant circle for determining whether or not the trade mark had lost its distinctive character was the distribution chain level which had been the subject of the research carried out by Procordia. It dismissed Björnekulla's application on the ground that Björnekulla had failed to prove that the trade mark no longer had a distinctive character.

Björnekulla appealed to the Svea hovrätt (Court of Appeal), which asked the ECJ: “In cases where a product is handled at several stages before it reaches the consumer what is or are, under Article 12(2)(a) of the Trade Mark Directive, the relevant circle or circles for determining whether a trade mark has become the common name in the trade for a product in respect of which it is registered?”. In response, the ECJ ruled yesterday: “Article 12(2)(a) of the Directive should be interpreted as meaning that, in cases where intermediaries participate in the distribution to the consumer or the end user of a product which is the subject of a registered trade mark, the relevant circles whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially”.

The IPKat thinks this must be right. This decision accords with OHIM practice to limit registration of a trade mark to the use of that mark for sale to trade consumers, even where the wider consuming public would regard the mark as descriptive or otherwise non-distinctive: see the Board of Appeal decision in respect of the word mark IDEAL.

Bostongurkas here and here (Swedish readers only!)