A non-stylised letter can be prevented a priori from registration?

Stefano Sandri

This, in essence, is the question raised by the appeal brought by OHIM against the judgment of the General Court of 29 April 2009 in BORCO-Marken-Import Matthiesen v OHIM in relation to the letter α.

In accordance with its established decision-making practice, OHIM refuses to register single letters as trade marks on the ground that such letters are, in its opinion, devoid of any distinctive character within the meaning of Article 7(1)(b) of the regulation.

In his Opinion, the Advocate General YVES BOT , 6 May, set out the reasons why he considers that OHIM’s criticisms of the Court’s reasoning are unfounded, from the moment that, under Article 4 of the regulation, letters are included among the registrable signs. On the other hand the assessment of their distinctive character, 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 specified in the application for registration (see in this respect, T-229/06, 21 May 2008, my blog Potrebbe bastare anche una E…). By failing to carry out any examination, based on the facts, of the distinctive character of the sign at issue, OHIM in effect introduced under Article 7(1)(b) of the regulation an a priori exclusion from registration of a non-stylised letter and thereby infringed the terms of the regulation. I’d also add that the fact that the letter is stylised or not is totally irrelevant since a single letter may work as a trade mark and be also perceived by the consumers also as a non visible sign.

The General Court and the Advocate General severely criticise the method used by OHIM for assessing the distinctive character of a sign consisting of a single letter. It is then to be expected that the Court of Justice now will set clear once for ever this – unreasonable- controverted issue. This appeal, indeed, gives the Court the opportunity to define its position of principle with regard to the method which OHIM must use for assessing the distinctive character of a sign consisting of a single non-stylised letter, for the purposes of registering the sign as a Community trade mark. That definition ought to put an end to the disagreement between OHIM and the General Court in this regard (point 18 of the Opinion).