Greek letter 'α' may have distinctive character, says CFI

European Union
In BORCO-Marken-Import Matthiesen GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-23/07, April 29 2009), the Court of First Instance (CFI) has held that the Greek letter 'α' in Times New Roman font may have distinctive character. 
On September 14 2005 BORCO-Marken-Import Matthiesen GmbH & Co KG filed an application for the registration of the Greek letter 'α' (alpha) as a Community trademark. BORCO sought registration in respect of "alcoholic beverages (except beers), wines, sparkling wines and beverages containing wines".

On May 31 2006 the OHIM examiner rejected the application on the basis of Article 7(1)(b) of the Community Trademark Regulation (40/94). The examiner found that:
  • the mark constituted a faithful representation of the Greek lower case letter 'α', without modifications; and
  • Greek-speaking purchasers would not detect an indication of the commercial origin of the goods described in the trademark application.
BORCO lodged an appeal against the decision, but the appeal was dismissed by the Fourth Board of Appeal of OHIM on the grounds that the mark was devoid of distinctive character. 

BORCO appealed to the CFI, seeking a declaration that Articles 7(1)(b) and (c) and (2) of the regulation did not preclude registration. In particular, BORCO argued that:
  • the mark had the distinctive character required under Article 7(1)(b) of the regulation, as it made it possible to identify the goods as having been produced by BORCO and, consequently, distinguished them from other goods on the market;
  • since Article 4 of the regulation states that marks may consist of letters, it cannot be assumed that such marks lack distinctive character under Article 7(1)(b); and
  • the board's argument that letters must remain available is irrelevant, since the concern that a letter may be monopolized is unrelated to the issue of distinctive character.
The CFI found that it had been for the board to determine the potential capacity of the mark to distinguish BORCO's goods from those of a different origin in the eyes of the average Greek-speaking consumer.
In examining the definition of 'distinctive character', the CFI referred to the decision in Harmann v OHIM (Case T-302/06), in which it was held that signs which are incapable of identifying specifically the origin of the goods and enabling the consumer who acquired the goods to repeat the experience:

  • must be regarded as devoid of any distinctive character; and
  • can acquire such character through use only.
The CFI stated that:
  • the board had not taken into account the mind of the relevant public when making its decision; and
  • by assuming that the mark was not capable of being distinguished from competitors' marks due to its lack of stylistic modifications, the board had misapplied Article 7(1)(b) of the regulation.
The CFI thus ordered that the board's decision be annulled and that OHIM re-examine BORCO's application under Article 63(6) of the regulation.
The decision clarifies the interpretation of 'distinctive character' under Article 7(1)(b) and will help future applicants considering filing trademark applications for simple marks. On the basis of this decision, OHIM may find that BORCO's mark is capable of registration. This may open up opportunities for other applicants to register single-letter trademarks. It is also quite a rare example of the CFI disagreeing with a board of appeal of OHIM.

Gillie Abbotts, Hammonds LLP, London

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