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

Don't dig up technical assessments, warns AG

Beset by an avalanche of new IP developments on a daily basis, the IPKat is always delighted to receive the help and assistance of his friends. He is accordingly very grateful to Bart Kiewiet (President, Community Plant Variety Office) for taking the time and effort to draw his attention to a recent Advocate General's Opinion (of 3 December) which the Kat knew was coming but quite overlooked at the time it was published online. Let Bart take up the narrative here:

"Here you find the opinion of the Advocate General Mazak in Case C-38/09 P concerning Community plant variety rights. The object of this case is a ruling of the Court of First Instance in Schräder v CPVO (Case T-187/06) mentioned on your website in November 2008 [here and here].

I would like to draw your special attention to paragraphs 25 and 26 of the conclusions (see below), in which the AG, in the wake of the Court of First instance, states that judicial review of complex assessments of a technical , scientific economic or social nature must be rather marginal. The relevant case law is, in the opinion of the AG, also applicable to decisions taken in the framework of the Community plant variety protection system.

"25. In that regard, it is apparent from the case-law of the Court that where Community authorities are, when exercising their powers, called upon to make complex assessments of a technical, scientific, economic or social nature, those authorities are to be accorded a certain margin of appreciation. It also follows from the case-law that, when reviewing an administrative decision based on such an appraisal, the Community judicature must not substitute its own assessment for that of the competent authority. Consequently, judicial review in such matters must be limited to verifying that the measure in question is not vitiated by any manifest errors or misuse of powers and that the authority concerned has not manifestly exceeded the limits of its discretion. In particular, as the Court of First Instance pointed out..., the Community judicature must in such cases examine whether the evidence relied on is factually accurate, reliable and consistent and whether that evidence contains all the information which must be taken into account in order to assess the complex situation concerned.

26. That case-law is, in my view, also applicable as regards the grant of Community plant variety rights to the extent, however, that an administrative decision in that field is the result of complex assessments of the kind referred to in the aforementioned case-law, as is without doubt, as the Court of First Instance held ..., the case when it comes to appraising the distinctive character of a plant variety in the light of the criteria laid down in Article 7(1) of Regulation No 2100/94.

I hope that you will draw the attention of your website friends to this opinion".

The IPKat is always pleased to oblige.

Incidentally, the AG advises the Court to dismiss the appeal -- presumably on the basis that once the position of the CPVO and the CFI has become firmly embedded and takes root, it's not a good idea to keep digging it up ...

Plants that are dangerous to cats here

Cats that are dangerous to plants here

Wine and glass "not complementary", says ECJ

The Court of Justice of the European Communities gave its decision today in Case C‑398/07 P, Waterford Wedgwood plc v Assembled Investments (Proprietary) Ltd, Office for Harmonisation in the Internal Market, a Community trade mark opposition which has been running for eight and a half years.

In December 1999, Assembled Investments applied to register the figurative sign on the right as a Community trade mark for "alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa" (Class 33). Waterford opposed, citing its earlier Community word mark WATERFORD for 'articles of glassware, earthenware, chinaware and porcelain’ (Class 21).  The serious opposition was based on (i) likelihood of confusion under Article 8(1)(a)(b)  of Council Regulation 40/94 and taking of unfair advantage of its reputation without due cause under Article 8(5).

The Opposition Division rejected the opposition in its entirety: there was no likelihood of confusion since the goods were not similar (the fact that wine is generally drunk in a glass being insufficient in this respect) and the evidence provided by Waterford was insufficient to establish the repute of the trade mark on which the opposition was based.  Waterford succeeded however on appeal, where the Board of Appeal found that the trade mark applied for and the WATERFORD mark were highly similar on the visual, phonetic and conceptual levels for the relevant consumers in the United Kingdom and Ireland and that wine and articles of glassware were similar on account of the high degree to which they were complementary. Finding for Waterford under Article 8(1)(b), the Board of Appeal concluded that there was no need to rule on the Article 8(5) ground of opposition.

Assembled Investments appealed to the Court of First Instance, which overturned the Board of Appeal's decision. In the CFI's view, wine and glasses are distinct by their nature and their use, being neither in competition with one another nor substitutable, and not produced in the same areas. In the case of a wine glass and a bottle of wine being distributed together, the CFI found that this is normally perceived by the consumers concerned as a promotional attempt to increase sales of wine rather than as an indication that the producer concerned devotes part of his activity to the distribution of articles of glassware. Any complementarity was insufficiently pronounced for it to be accepted that, from the consumer’s point of view, the goods in question were similar within the terms of Article 8(1)(b).

Waterford then appealed to the Court of Justice, which today dismissed its appeal. Said that Court:

"... the Court of First Instance ... carried out a detailed assessment of the similarity of the goods in question on the basis of the factors [laid down by the Court of Justice]. ... it cannot be alleged that the Court of First Instance did not did not take into account the distinctiveness of the earlier trade mark when carrying out that assessment, since the strong reputation of that trade mark relied on by Waterford Wedgwood can only offset a low degree of similarity of goods for the purpose of assessing the likelihood of confusion, and cannot make up for the total absence of similarity. Since the Court of First Instance found ... that the goods in question were not similar, one of the conditions necessary in order to establish a likelihood of confusion was lacking ... and therefore, the Court of First Instance was right to hold that there was no such likelihood".

The IPKat is always anxious about cases in which complementarity of inherently dissimilar goods is argued, since what constitutes complementary goods (or services) is bound to differ as between economic sectors and cultural preferences.  Merpel says, this disposes of the Article 8(1)(b) point -- but whatever happened to the Article 8(5) opposition ground? Can anyone let us know?

Waterford crystal here and here

Glass recycling here

Stellenbosch here