MADRID PROTOCOL GUIDE FOR JAMAICA

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Abstract
The Court of Justice has ruled that OHIM must make a full and stringent assessment of whether an unstylized single letter has the distinctive character required for it to be registered as a Community trade mark, by carrying out an examination which is based on the relevant facts and focused on the relevant goods or services.


Previous Section Legal context
Article 4 of Council Regulation 40/94 on the Community trade mark, now replaced by Regulation 207/2009 (the ‘CTM Regulation’), provides that ‘a Community trade mark may consist of any signs capable of being represented graphically … including … letters … , provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings’. Article 7(1)(b) of the CTM Regulation provides that ‘trade marks which are devoid of any distinctive character’ are not to be registered. Article 74(1) of the CTM Regulation provides that ‘in proceedings before it [OHIM] shall examine the facts of its own motion’.


Facts
Borco-Marken-Import is a producer of international spirit brands and wines, based in Hamburg, with a portfolio comprising over 60 brands. These include ALPHA NOBLE vodka, which Borco describes as an ‘international ultra-premium vodka’. Borco owns various Community trade marks (CTMs) for this brand, including a word mark for ALPHA NOBLE, and a figurative mark for ‘α’ with ALPHA NOBLE.
Borco applied to OHIM for a CTM for ‘α’ on its own in class 33 (alcoholic beverages, except beers). The OHIM examiner rejected the application for lack of distinctiveness under Article 7(1)(b) of the CTM Regulation. OHIM's Board of Appeal subsequently endorsed the view that the single, unstylized Greek lower-case letter ‘α’ lacked the distinctive character required for registration as a CTM.
The Court of First Instance, now the General Court (CFI), annulled the Board of Appeal's decision on the basis that single letters did not necessarily lack the minimum degree of distinctive character. The CFI held that OHIM still needed to conduct an examination as to whether the mark was capable of indicating origin. OHIM appealed to the Court of Justice (ECJ), arguing that it is not always required, when assessing the distinctive character of a proposed trade mark, to examine whether the mark is actually distinctive in relation to the goods or services covered by the application. OHIM also argued that its assessment is made a priori and so inevitably involves an element of conjecture.


Analysis
The ECJ dismissed OHIM's appeal. It started from the premise that, under Article 4 of the CTM Regulation, letters are one of the categories of signs of which a CTM may consist, provided they are capable of distinguishing the goods or services of one undertaking from those of others. To be registered as a CTM, a sign must also have distinctive character under Article 7(1)(b). Case law prescribes that this must be assessed by reference to (i) the goods or services in respect of which the application has been made, and (ii) the perception of them by the relevant public. It may be more difficult to establish that marks falling within certain categories (such as colours per se and three-dimensional marks) have a distinctive character. It is legitimate for these difficulties to be taken into account, but OHIM cannot lay down specific criteria departing from the settled approach to assessing distinctiveness.
The ECJ therefore held that OHIM must assess whether ‘α’ is capable of distinguishing goods and services by carrying out an examination, based on the facts, focusing on those goods or services. It emphasized that registration of a sign as a trade mark does not require a specific level of linguistic or artistic creativity or imaginativeness from the applicant.
The ECJ also held that OHIM is required to carry out a stringent and full examination of every trade mark application, in order to avoid trade marks being improperly registered and to ensure, as far as possible, that marks whose use could successfully be challenged in court are not registered. Although OHIM's examination of the distinctive character of a sign has to be carried out a priori, this does not prevent it from being based on the facts. Given that OHIM is required to carry out an a priori examination of distinctiveness based on the relevant facts, it would defeat the object of that review if OHIM could nonetheless rely on unjustified conjecture at the expense of the facts.
The ECJ also rejected OHIM's claim that it was entitled to base its analysis of distinctiveness on facts arising from the practical experience that is generally acquired from the marketing of general consumer goods, rather than on specific, relevant facts. In contrast, Article 74(1) of the CTM Regulation requires OHIM to examine, of its own motion, the relevant facts which might lead it to apply one of the absolute grounds for refusal. OHIM had argued that the onus was on an applicant to provide specific and substantiated evidence of a mark's distinctive character, effectively reversing the requirement under Article 74(1). In fact, the burden of proof only falls on the applicant where it has to respond to specific indications of a lack of distinctive character set out by OHIM.


Practical significance
This is a positive result for brand owners. The legal framework gives no reason why innovative applicants should not obtain registrations for simple but distinctive trade marks, or trade marks that have acquired distinctiveness through use. The ECJ's judgment effectively affirms the principle that no category of sign merits lesser consideration than any other. Single-letter trade marks will not always be entitled to registration, but they should be subject to the same criteria as other brands when seeking a place on the register.