In BORCO-Marken-Import Matthiesen GmbH & Co KG v OHIM (Case T-23/07), the Court of First Instance (CFI) annulled a decision of the Office of Harmonization for the Internal Markets (OHIM’s) Fourth Board of Appeal holding that a single letter could never be capable of distinguishing the goods and services of one undertaking from those of another, finding that such a ruling was contrary to Article 4 of the Community Trade Mark Regulation (40/94/EC).

BORCO-Market-Import Matthiesen applied to register a representation of the Greek letter alpha α, as a Community trade mark in respect of wine.

The examiner rejected the application under Article 7(1)(b) of the Regulation for lack of distinctive character, finding that Greek-speaking purchasers would not detect in the sign an indication of the commercial origin of the goods. The examiner found that the letter alpha was used to denote superior quality.

BORCO appealed to OHIM’s Fourth Board of Appeal, which upheld the examiner’s decision, concluding that single letters had no distinctive character without the addition of a graphical element that was “something perceptible, which is capable of being remembered and recognised”. Following Libertel [2003] ECR I-3793 (Case C-104/01), the Board found that single letters, like colours and numbers presented singly, must remain available as a “general reserve” for purposes of identification, description or other uses. BORCO appealed to the CFI.

The CFI annulled the Board of Appeal’s decision, finding that a ruling that single letters could never be capable of distinguishing the goods and services of one undertaking from those of another was contrary to Article 4 of the Regulation, which expressly lists letters amongst those signs which can function as a trade mark. Furthermore, registration of a trade mark was not conditional on a level of creativity or artistic imagination on the part of the applicant.

The CFI noted that in Libertel the court held that a single colour was registrable, albeit in the context of a decision that distinctiveness without any prior use is inconceivable save in exceptional circumstances.

The CFI returned the case to OHIM, ruling that it must decide upon the facts whether in this case a single letter was capable of distinguishing the goods and services of one undertaking from those of another.

COMMENT

Although OHIM may again refuse the mark for lack of distinctive character, this case ensures that OHIM must reach such decisions on a case by case basis rather than by categorically finding that certain signs can never be distinctive.