Alpha? Bet it's registrable ...

What with all this fuss over Lego bricks [see Class 99 post here -- with a Kat-post to follow], many normally attentive folk have forgotten to complain that the IPKat has said not a word over the interesting and valuable, if undeniably annoying, decision of the very same Court of Justice of the European Union in Case C-265/09 P, BORCO-Marken-Import Matthiesen GmbH & Co. KG v OHIM, a First Chamber ruling last Friday, 9 September 2010.

What happened here is that BORCO applied to register the letter 'α' (alpha, the Greek for 'a') as a Community trade mark for ‘alcoholic beverages (except beers), wines, sparkling wines and beverages containing wine' in Class 33. "No distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation", said the examiner. Since the mark was a faithful reproduction of the Greek lower case letter 'α', without graphical modifications, Greek speaking purchasers would not detect in that sign any indication of the commercial origin of the goods described in BORCO's application.

BORCO's appeal was dismissed by the Fourth Board of Appeal, but it struck lucky in the General Court which said that, by assuming from its lack of graphical modifications or ornamentations that, by definition, the letter 'α' lacked distinctive character, without carrying out an examination as to whether, on the facts, that sign was capable of distinguishing, in the mind of the reference public, the goods at issue from those of BORCO's competitors, the Board of Appeal had misapplied Article 7(1)(b). Having upheld the appeal on this ground, the General Court did not consider the second and third pleas raised by Borco on appeal.

OHIM, not a little indignant, appealed to the Court of Justice. It submitted that, contrary to the General Court's assessment, the examination of the distinctive character of a sign on the basis of Article 7(1)(b) did not always imply a determination of whether that sign was capable of distinguishing the different goods in the context of an examination, based on the facts, focused on those goods. The General Court erred in that it had rejected the view of the Fourth Board of Appeal on the sole ground that it had established, in respect of a specific category of signs, the principle that those signs could not normally serve as an indication of origin: the Court should have ascertained whether the Board of Appeal's assertion was actually correct. OHIM also submitted that the General Court had disregarded the fact that the examination of the distinctive character of a sign was a prior examination. Accordingly there was always an element of conjecture in the decision taken after that examination: the average consumer was a legal concept and the examination of the distinctive character of a sign had to be carried out independently of any actual use of that sign on the market.

The Court of Justice, working from basic principles, dismissed the appeal.  Article 4 of the Regulation named letters among the categories of signs of which a CTM might consist, provided that they were capable of distinguishing the goods or services of one undertaking from those of other undertakings. Only if devoid of any distinctive character are such marks not to be registered.  Such distinctive character must be assessed (i) by reference to the goods or services in respect of which registration had been applied for and (ii) by reference to how the relevant public sees them. This was also the same method of assessment of the distinctive character of other signs, such as those consisting solely of a colour per se, three dimensional marks and slogans.

In the Court of Justice's view, while the criteria for the assessment of distinctive character are the same for different categories of marks, it might be that, for the purposes of applying those criteria, the relevant public's perception is not necessarily the same in relation to each of those categories.  Thus it might be harder to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories. Difficulties in establishing distinctiveness which might be associated with certain categories of marks because of their very nature – difficulties which it was legitimate to take into account – did not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the Court's case-law. The distinctive character of a mark must always to be assessed specifically by reference to the goods or services designated.

Here, dealing with an unmodified 'α', OHIM must remember that registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness from the mark's owner. Thus, while it might be harder to prove distinctiveness for marks consisting of a single letter than for word marks, OHIM has to assess whether 'α' could distinguish goods and services in the context of an examination, based on the facts, focusing on those goods or services.

What about the requirement to carry out an a priori examination of the distinctive character of a sign? This doesn't mean that this examination can't be based on the facts. The examination of trade mark applications should not be minimal, but should be stringent and full, to stop marks being improperly registered and, for reasons of legal certainty and good administration, to ensure the non-registrability of marks the use of which could be successfully challenged in court. The very objective of an a priori review would be thwarted if, despite the requirement for OHIM to carry out an examination, based on the facts, of the distinctive character of the mark applied for, OHIM could still, without relevant justification, rely on conjecture or mere doubts.

The IPKat must concede that, while he awards full marks to the Court of Justice both for the quality of its legal analysis and the integrity of its conclusions, his real sympathy lies with OHIM.  Everyone in the real world knows that 'α' is a poxy mark that no more deserves such respect as any other letter of any European alphabet, and that OHIM's job gets harder when, in protecting traders, consumers, the market as a whole and anyone who wants reassurance that he can use the alphabet, they have to play it tediously according to the rules.  Merpel says, what are you grumbling about? A single letter can gain registration if it can be shown to have acquired distinctiveness through use, and there are no categories of sign that deserve better treatment than any other.

A here and here
Alpha here, Omega here
Alphabet soup here