Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH.
Date: 2014-03-06
19. In that regard, it must be stated at the outset that Article 12(2)(a) of Directive 2008/95 addresses the situation where the trade mark is no longer capable of fulfilling its function as an indication of origin (see, to that effect, Case C‑371/02 Björnekulla Fruktindustrier  [2004] ECR I‑5791, paragraph 22).
20. Among the various functions of a trade mark, that function as an indication of origin is an essential one (see, inter alia, Joined Cases C‑236/08 to C‑238/08 Google France and Google  [2010] ECR I‑2417, paragraph 77, and Case C‑482/09 Budějovický Budvar  [2011] ECR I‑8701, paragraph 71). 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 (see, to that effect, Case C‑12/12 Colloseum Holding  [2013] ECR, paragraph 26 and the case-law cited). That undertaking is, as the Advocate General stated at point 27 of his Opinion, that under the control of which the goods or services are marketed.
21. That essential function of trade marks has been incorporated by the European Union legislature into Article 2 of Directive 2008/95, which provides that signs which are capable of being represented graphically may only constitute a trade mark if they are capable of distinguishi ng the goods or services of one undertaking from those of other undertakings (Case C‑517/99 Merz & Krell  [2001] ECR I‑6959, paragraph 23, and Björnekulla Fruktindustrier , paragraph 21).
22. 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 (see, to that effect, Björnekulla Fruktindustrier , paragraph 22). The rights conferred on the proprietor of that mark under Article 5 of Directive 2008/95 may then be revoked (see, to that effect, Case C‑145/05 Levi Strauss  [2006] ECR I‑3703, paragraph 33).
27. That finding is not contrary to the interpretation of Article 12(2)(a) of Directive 2008/95 given by the Court in paragraph 26 of the judgment in Björnekulla Fruktindustrier , according to which, in cases where intermediaries participate in the distribution of a product which is the subject of a registered trade mark, the relevant classes of persons whose views must 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 or end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially.
29. However, as the Court pointed out in paragraph 24 of the judgment in Björnekulla Fruktindustrier , in general, the perception of consumers or end users will play a decisive role. It must be held, in line with what the Advocate General stated at points 58 and 59 of his Opinion, that in a case such as that at issue in the main proceedings, which is, subject to verification by the referring court, characterised by the loss of distinctive character of the trade mark concerned from the point of view of the end users, that loss may result in the revocation of that trade mark. 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.
32. In that regard, it must be borne in mind that, by balancing the interests of the proprietor of a trade mark against those of his competitors in the availability of signs, the European Union legislature, in adopting Article 12(2)(a) of that directive, 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 ( Levi Strauss , paragraph 19, and Case C‑102/07 adidas and adidas Benelux  [2008] ECR I‑2439, paragraph 24).
33. The Court has already held that 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 (see, to that effect, Levi Strauss , paragraph 34).