Case C-371/02

Björnekulla Fruktindustrier AB

v

Procordia Food AB

(Reference for a preliminary ruling from the Svea hovrätt (Sweden))

(Trade marks – Directive 89/104/EEC – Article 12(2)(a) – Revocation of rights conferred by the trade mark – Trade mark which has become the common name in the trade – Relevant circles for purposes of the assessment)

Summary of the Judgment

Approximation of laws – Trade marks – Directive 89/104 – Grounds for revocation of a trade mark – Trade mark which has become the common name in the trade – Scope of term ‘in the trade’ – Relevant circles

(Council Directive 89/104, Art. 12( 2)(a))

Article 12(2)(a) of the First Directive 89/104 relating to trade marks, which provides that the proprietor of a trade mark may have its rights revoked if the mark has become the common name in the trade for a product or service in respect of which it is registered, 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 classes of persons 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.

(see para. 26, operative part)

JUDGMENT OF THE COURT (Sixth Chamber) 29 April 2004 (1)

(Trade marks – Directive 89/104/EEC – Article 12(2)(a) – Revocation of rights conferred by the trade mark – Trade mark which has become the common name in the trade – Relevant classes of persons for purposes of the assessment)

In Case C-371/02,

REFERENCE to the Court under Article 234 EC by the Svea hovrätt (Sweden) for a preliminary ruling in the proceedings pending before that court between

and

on the interpretation of Article 12(2)(a) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1),

THE COURT (Sixth Chamber),,

composed of: V. Skouris, acting as the President of the Sixth Chamber, C. Gulmann (Rapporteur), J.N. Cunha Rodrigues, J.-P. Puissochet and R. Schintgen, Judges,

Advocate General: P. Léger,

after considering the written observations submitted on behalf of:

after hearing the oral observations of Björnekulla Fruktindustrier AB, represented by I. Bernhult and B.A. Samuelson, advokater, Procordia Food AB, represented by B. Eliasson and M. Plogell, advokat, and the Commission, represented by C. Tufvesson and N.B. Rasmussen, at the hearing on 10 September 2003,

after hearing the Opinion of the Advocate General at the sitting on 13 November 2003,

gives the following

‘1. The following shall not be registered or if registered shall be liable to be declared invalid:

…

‘2. A trade mark shall also be liable to revocation if, after the date on which it was registered,

‘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 class or classes of persons for determining whether a trade mark has become the common name in the trade for a product in respect of which it is registered?’

On those grounds,

THE COURT (Sixth Chamber),

in answer to the questions referred to it by the Svea hovrätt by order of 14 October 2002, hereby rules:

Skouris

Gulmann

Cunha Rodrigues

Puissochet

Schintgen

Delivered in open court in Luxembourg on 29 April 2004.

R. Grass

V. Skouris

Registrar

President