Case C‑409/12

Backaldrin Österreich The Kornspitz Company GmbH

v

Pfahnl Backmittel GmbH

(Request for a preliminary ruling from the Oberster Patent- und Markensenat)

‛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’

Summary — Judgment of the Court (Third Chamber), 6 March 2014

Approximation of laws — Trade marks — Directive 2008/95 — Grounds for revocation of the trade mark — Trade mark which has become a common name in the trade — No obligation to ascertain before revocation whether there are any other names for the product or service in question

Approximation of laws — Trade marks — Directive 2008/95 — Grounds for revocation of the trade mark — Trade mark which has become a common name in the trade — Loss of distinctive character due to acts or inactivity of the proprietor of the trade mark — Concept of inactivity

Approximation of laws — Trade marks — Directive 2008/95 — Grounds for revocation of the trade mark — Trade mark which has become a common name in the trade — Loss of distinctive character due to acts or inactivity of the proprietor of the trade mark — Assessment in the light of the perception of the sign by end users only

Among the various functions of a trade mark, the function as an indication of origin is an essential one. It serves to identify the goods or services covered by the mark as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. That undertaking the one under the control of which the goods or services are marketed. That essential function of trade marks has been incorporated by the EU legislature into Article 2 of Directive 2008/95 to approximate the laws of the Member States relating to trade marks, which provides that signs which are capable of being represented graphically may only constitute a trade mark if they are capable of distinguishing the goods or services of one undertaking from those of other undertakings. That condition is given effect to in, inter alia, Articles 3 and 12 of that directive. While Article 3 thereof specifies the circumstances in which a trade mark is incapable, ab initio, of fulfilling its function as an indication of origin, Article 12(2)(a) of the directive relates to the situation where the trade mark has become the common name and has therefore lost its distinctive character, with the result that it no longer fulfils that function. The rights conferred on the proprietor of that mark under Article 5 of Directive 2008/95 may then be revoked. It is true that the question whether a trade mark has become the common name in the trade for a product or service in respect of which it is registered must be assessed not only in the light of the perception of consumers or end users but also, depending on the features of the market concerned, in the light of the perception of those in the trade, such as sellers. However, in general, the perception of consumers or end users will play a decisive role. The fact that the sellers are aware of the existence of that trade mark and of the origin which it indicates cannot, on its own, preclude such revocation. Consequently, Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that 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. (see paras 20-22, 28-30, operative part 1)

By balancing the interests of the proprietor of a trade mark against those of his competitors in the availability of signs, the EU legislature, in adopting Article 12(2)(a) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks, considered that the loss of that mark’s distinctive character can be relied on against the proprietor thereof only where that loss is due to his action or inaction. In that regard, the concept of ‘inactivity’ may cover a failure on the part of the proprietor of a trade mark to have recourse to the exclusive rights referred to in Article 5 of that directive in due time, for the purposes of applying to the competent authority to prevent third parties from using a sign in respect of which there is a likelihood of confusion with that mark, since the purpose of such applications is to preserve the distinctive character of the mark in question. However, unless the pursuit of the balance described is to be abandoned, that concept cannot in any way be restricted to that kind of omission, but includes all the omissions by which the proprietor of a trade mark shows that he is not sufficiently vigilant as regards the preservation of the distinctive character of his trade mark. Consequently, in a case in which the sellers of the product made using the material supplied by the proprietor of the trade mark do not generally inform their customers that the sign used to designate the product in question has been registered as a trade mark and thus contribute to the transformation of that trade mark into the common name, that proprietor’s failure to take any initiative which may encourage those sellers to make more use of that mark may be classified as inactivity within the meaning of Article 12(2)(a) of Directive 2008/95. Consequently, 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. (see paras 32-34, 36, operative part 2)