Advocate general backs General Court in single-letter showdown

European Union
Advocate General Yves Bot has delivered his opinion in Office for Harmonization in the Internal Market v BORCO-Marken-Import Matthiesen GmbH & Co KG (Case C-265/09 P, May 6 2010).
 
BORCO-Marken-Import Matthiesen GmbH & Co KG filed an application for the registration as a Community trademark of the Greek letter ‘α’ (alpha). BORCO sought to register the mark for "alcoholic beverages (except beers), wines, sparkling wines and beverages containing wine" in Class 33 of the Nice Classification. Both the examiner and the Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) held that the mark was devoid of distinctive character under Article 7(1)(b) of the Community Trademark Regulation (40/94), finding that single-letter word marks could not possess the requisite distinctive character due to the scarcity of single characters.

The Court of First Instance, now the General Court, reversed and remanded the case to OHIM, holding that "OHIM had not carried out an examination, based on the facts, of the distinctive character of the sign at issue in relation to the goods specified in the application for registration" (for further details please see "Greek letter 'α' may have distinctive character, says CFI"). OHIM appealed to the Court of Justice of the European Union (ECJ), asking that the latter set aside the General Court's decision.
 
Before the ECJ, OHIM first maintained that, under Article 7(1)(b) of the regulation, it is not always required, when assessing the distinctive character of a mark, to carry out an examination, based on the facts, of the various goods and services covered by the application for registration. Second, OHIM alleged that the General Court had failed to understand the nature of the assessment that it was required to make under that provision. Finally, OHIM argued that the General Court had misunderstood the burden of proof as regards demonstrating the distinctive character of the mark concerned.
 
In his opinion, the advocate general stated that the ECJ had repeatedly pointed out that:

  • the examination which takes place when registration is sought must not be cursory;
  • the examination of the grounds for refusal listed in Article 7 of the regulation and Article 3 of the First Trademarks Directive (89/104/EEC) must be rigorous, thorough and full; and
  • the competent authority cannot carry out the examination in abstracto.
The existence of an absolute ground for refusal, such as that relating to a lack of distinctive character, must be assessed specifically by reference to each of the goods or services in respect of which registration is sought. Because “letters” are expressly included among the registrable signs under Article 4 of the regulation, OHIM’s assessment of the distinctive character of a letter, within the meaning of Article 7(1)(b) of the regulation, must be carried out within the context of each specific case, taking into account the nature and particular characteristics of the goods at issue.
 
According to the advocate general, it was not sufficient to state that the “public 'might' view the letter 'α' as a reference to quality ('A' quality), an indication of size, or of a type or kind of alcoholic beverage, such as those covered by the [trademark] application". Instead, the advocate general stated that:
 
"[OHIM should] carry out an examination, based on the facts, of the distinctive character of the sign at issue in relation to the goods specified in the application for registration and give reasons in that regard for its decision to refuse registration and..., secondly, it could not, without infringing the regulation, reintroduce under Article 7(1)(b) of the regulation an a priori exclusion from registration of a non-stylized letter."

Thus, the advocate general recommended that the ECJ dismiss OHIM’s appeal.
 
This case is the third case involving single-letter marks in which OHIM and the General Court have expressed divergent views. OHIM’s decisions refusing to register the capital letters 'I' and 'E' were annulled by the General Court in IVG Immobilien v OHIM (Case T-441/05) and Hartmann v OHIM (Case T-302/06), respectively. Here, the advocate general sided squarely with the General Court. If the ECJ follows the advocate general's recommendations, there is no doubt that OHIM will have to examine single-letter word marks on a case-by-case basis in the future.
 
Peter Gustav Olson, MAQS Law Firm, Copenhagen

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