# C_2014129EN.01000301.xml

| 28.4.2014 | EN | Official Journal of the European Union | C 129/3 |
| --- | --- | --- | --- |

28.4.2014

EN

Official Journal of the European Union

C 129/3

---

Judgment of the Court (Third Chamber) of 6 March 2014 (request for a preliminary ruling from the Oberster Patent- und Markensenat (Austria)) — Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH

(Case C-409/12) (1)

((Trade marks - Directive 2008/95/EC - Article 12(2)(a) - Revocation - Trade mark which, in consequence of acts or inactivity of the proprietor, has become the common name in the trade for a product or service in respect of which it is registered - Perception of the word sign ‘KORNSPITZ’ by sellers, on the one hand, and by end users, on the other - Loss of distinctive character from the point of view of end users only))

(2014/C 129/03)

Language of the case: German

Referring court

Oberster Patent- und Markensenat

Parties to the main proceedings

Applicant: Backaldrin Österreich The Kornspitz Company GmbH

Defendant: Pfahnl Backmittel GmbH

Re:

Request for a preliminary ruling — Oberster Patent- und Markensenat — Interpretation of Article 12(2)(a) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) — Grounds for revocation — Registered word mark which has become the common name for the product concerned for consumers on account of the absence of information given by intermediaries as to the existence of the mark — No alternative names to describe the product concerned — Inactivity of the proprietor of the mark.

Operative part of the judgment

| 1. | Article 12(2)(a) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in a case such as that at issue in the main proceedings, a trade mark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the proprietor, that trade mark has become the common name for that product from the point of view solely of end users of the product. |
| --- | --- |

1.

Article 12(2)(a) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in a case such as that at issue in the main proceedings, a trade mark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the proprietor, that trade mark has become the common name for that product from the point of view solely of end users of the product.

| 2. | Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that it may be classified as ‘inactivity’ within the meaning of that provision if the proprietor of a trade mark does not encourage sellers to make more use of that mark in marketing a product in respect of which the mark is registered. |
| --- | --- |

2.

Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that it may be classified as ‘inactivity’ within the meaning of that provision if the proprietor of a trade mark does not encourage sellers to make more use of that mark in marketing a product in respect of which the mark is registered.

| 3. | Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that the revocation of a trade mark does not presuppose that it must be ascertained whether there are other names for a product for which that trade mark has become the common name in the trade. |
| --- | --- |

3.

Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that the revocation of a trade mark does not presuppose that it must be ascertained whether there are other names for a product for which that trade mark has become the common name in the trade.

---

(1)  
  OJ C 399, 22.12.2012.

---