'Caipi' is common abbreviation for caipirinha, says CFI

In Borco-Marken-Import Matthiesen GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-405/04), the Court of First Instance (CFI) has upheld a decision to refuse registration of the trademark CAIPI for alcoholic beverages on the grounds that it is descriptive under Article 7(1)(c) of the Community Trademark Regulation (40/94).

German company Borco-Marken-Import Matthiesen GmbH & Co KG filed an application for the registration of the trademark CAIPI as a Community trademark for alcoholic beverages, claiming the seniority of its German trademark registration of May 3 1996. The OHIM examiner refused the application on the basis of Article 7(1)(b) and (c) of the regulation, stating that 'caipi' was the usual abbreviation for the Brazilian cocktail caipirinha. The examiner referred to internet printouts showing the use of the term 'caipi' and concluded that CAIPI was descriptive of the specified goods. Confirming the examiner's decision, the Board of Appeal of OHIM considered that 'caipi' should remain free for use by competitors. The board also stated that CAIPI lacked distinctive character under Article 7(1)(b) of the regulation and that national registrations could be used at most as a first indication. Borco appealed to the CFI.

The CFI considered that the issue was whether there was a sufficiently direct and concrete link between CAIPI and the designated products. The CFI found that the examples considered by the examiner and the Board of Appeal were sufficient to show that:

• 'caipi' was an expression from the common language to designate the alcoholic cocktail caipirinha; and
  
  
• the relevant public would immediately understand that the sign CAIPI was linked to the cocktail.

The fact that the term was not entered in dictionaries was insufficient to prove that the term was not descriptive. In respect of the use of the sign in the course of trade, the CFI held that it was sufficient that the sign was likely to describe the goods.

As to whether there was a need to keep the term 'caipi' free, the CFI confirmed that Article 7(1)(c) did not require the need to keep the term free to be concrete, actual and serious. It was sufficient to consider whether there existed a sufficient direct and concrete link between the sign and the characteristics of the category of the goods or services designated by the application. The CFI considered that the sign was likely to be used by other economic operators wishing to show that their products are linked to the cocktail caipirinha. The fact that the term 'caipi' was not used as a mark and was not written on the bottle of a ready-made beverage was irrelevant insofar as the sign was used in a descriptive manner.

The CFI also stated that national registrations and decisions were elements which could be taken into account. However, the examiner and the Board of Appeal did not have to rely on a national decision to appreciate the perception of the relevant public, given that the Community trademark regime is autonomous.

Borco further challenged the Board of Appeal's decision on the basis that the board had incorrectly applied Article 12 of the regulation. However, the CFI stated that Article 12 was not applicable in Community trademark application proceedings, given that a trademark registration must pre-exist.

Finally, in respect of Article 7(1)(b), the CFI reiterated that a word mark which is descriptive of the characteristics of the goods or services under Article 7(1)(c) is necessarily devoid of distinctive character in respect of these goods or services. Moreover, given that one of the absolute grounds under 7(1) succeeded, there was no need to examine the other grounds. The CFI thus rejected the appeal.

Emilie Scheffer, Hammonds, London