On 6 May the Advocate General Bot delivered his opinion in the case of OHIM v BORCO-Marken-Import Matthiesen GmbH & Co. KG (Case C-265/09 P) concerning the interpretation of Article 7(1)(b) of the Council regulation 40/94. 

The OHIM considers that the judgement under appeal was vitiated by “error of law in the interpretation of Article 7(1)(b) of the regulation, since OHIM, contrary to what the General Court maintains, was not required to carry out such an examination of the sign at issue.”

The main question upon which the ECJ was asked to rule was whether “it was possible for the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to introduce under Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, an a priori exclusion of a non-stylised letter from registration as a Community trade mark, without infringing that regulation?”

Commenting on the OHIM's ability to interpret both the legislation and the decisions of the General Court, the A-G concluded that “from the moment that, under Article 4 of the regulation, letters are included among the registrable signs, 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. ...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.” (below are further details of the opinion).

Usually, the OHIM refuses to register single letters on the grounds that such letters are devoid of distinctiveness, but exceptions can be made for letters or numbers if they are sufficiently stylised “in such a way that the overall graphic impression prevails over the mere existence of a single letter or numeral as such”.

The OHIM’s plea was subdivided into three parts: “First, OHIM maintains that, under Article 7(1)(b) of the regulation, it is not always required, when assessing the distinctive character of the sign concerned, to carry out an examination, based on the facts, of the various goods and services covered by the application for registration. Secondly, OHIM complains that the General Court failed to understand the nature of the assessment it is required to make under that provision. Since it is an a priori assessment, it is necessarily of a doubtful nature. Thirdly, OHIM considers that the General Court misunderstood the burden of proof as regards demonstrating the distinctive character of the sign concerned.”

1. The allegation that the General Court misunderstood the method of assessing the distinctive character of the sign at issue, within the meaning of Article 7(1)(b) of the regulation

The OHIM claimed that, according to settled case-law, it was not always required, when assessing the distinctive character of the sign concerned pursuant to Article 7(1)(b) of the regulation, to carry out an examination, based on the facts, of the various goods and services covered by the application for registration. OHIM maintained that, in that assessment, it may rely on general statements concerning the perception of the consumer.

The A-G suggested that the OHIM is confused with regard to Article 4 and Article 7(1)(b). It is insufficient to say whether a sign is registerable under Article 4. The OHIM has to examine whether there are any absolute grounds to refuse registration under Article 7(1)(b), whether based on the facts of each individual case the sign is capable of constituting an indication of origin for the goods or services in respect of which the registration is sought.

The latter “requires a specific examination, in connection with which OHIM has particular obligations, and the content of which has been, to a great extent, defined by the Court.” (para 38). This examination “must not be cursory but it must be rigorous, thorough and full, and the competent authority cannot carry out the examination in abstracto.” (para.40)

Such examination is important “for reasons of legal certainty and sound administration, and it is necessary to ensure that trade marks are not improperly registered.” (para.41) Moreover, although such thorough and detailed examination may be difficult and time consuming, the Court refused “to allow the competent authorities to use those difficulties as an excuse for assuming that such marks are, a priori, devoid of any distinctive character.” (para.42)

“49. ...The OHIM should have carried out an examination, based on the facts, of the distinctive character of the sign at issue in relation to the goods specified in the application for registration and given reasons in that regard for its decision to refuse registration and secondly, it could not, without infringing the regulation, reintroduce under Article 7(1)(b) of the regulation an a priori exclusion from registration of a non-stylised letter.”

2. The allegation that the General Court misunderstood the nature of the examination of the distinctive character of the sign at issue under Article 7(1)(b) of the regulation

The OHIM considered that the General Court misunderstood the nature of the examination of the distinctive character required under Article 7(1)(b) of the regulation. In fact, OHIM points out that it is an a priori examination and that, as a consequence, its decision is always of a doubtful nature.

“OHIM relies on the a priori nature of the examination it has to undertake under Article 7(1)(b) of the regulation to justify the cursory examination it carried out and to explain the doubtful tone of its reasoning. It is for that very reason and to avoid situations in which one trade mark is improperly registered and another is wrongly refused registration that the Court has required, on the contrary, that OHIM carry out a rigorous, full and complete examination of the grounds for refusal referred to in Article 7 of the regulation.” (para.54)

3. The allegation of a failure to understand the rules relating to the burden of proof

The OHIM relied on the judgment in Develey v OHIM and claimed that the General Court failed to comprehend the burden of proof as regards demonstrating the distinctive character of the mark within the meaning of Article 7(1)(b) in that that it wrongly held that OHIM must always establish the lack of any distinctive character of the mark for which registration is sought, by referring to specific facts.

Here the A-G suggested that the OHIM misinterpreted the Court’s judgment as the latter found that, on the facts, no examination of the distinctive character was carried out in relation to the relevant goods at all! So “the General Court in no way failed to observe the rules governing the burden of proof but applied, in accordance with the settled case-law of the Court of Justice, the rules relating to the assessment of the distinctive character of signs required under Article 7(1) of the regulation” (para.58). Furthermore, although it is for the applicant to show that his mark has a distinctive character, the OHIM should have carried out the examination anyway.