Companies should be able to register single letters as trade marks, says top court advisor

European trade mark law the Community Trade Marks Regulation says that something cannot be registered as a trade mark if it is "devoid of distinctive character".

Trade mark examination office the Office for Harmonisation in the Internal Market (OHIM) had been rejecting applications to register single letters as trade marks because of the 'distinctive character' rule. Advocate General of the Court of Justice of the European Union (CJEU) Yves Bot has written a legal opinion saying that such rejections should not be automatic. While not all single letter applications should be accepted, he said, they should not automatically be rejected.

CJEU advocates general provide a legal opinion after a hearing which the Court's judges can choose to base their rulings on or not.

OHIM's own guidelines said that it would only allow single letters or numbers to be registered as trade marks if they are heavily stylised.

"[OHIM] applies an objection under [the 'distinctive character' requirement] for single letters or numerals," it said. "This is justified in particular in view of the limited number of letters or numerals available for other traders. For example, the numeral called 7' was refused for cars."

"However, single letters or numerals are registrable 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," it said.

The case before the CJEU concerned an unstylised, unaltered greek letter 'a', which a company, Borco, applied to register as a trade mark for the importing of wine and alcoholic drinks. OHIM did not allow it to be registered, saying that

The EU's General Court rebuked OHIM for its automatic refusal of the trade mark. "The General Court found that the Board of Appeal did not carry out an examination, based on the facts," said Bot. "In particular, it considered that the Board of Appeal should have determined, through an examination, on the facts, of the potential capacity of the sign at issue, whether the sign was incapable of distinguishing, in the eyes of the average Greek-speaking consumer, BORCO’s goods from those of a different origin."

"[The] refusal, as a matter of definition, to accept that single letters can have any distinctive character, stated without reservation and without undertaking [such an] examination based on the facts, is contrary to the [very] wording of Article 4 of [the regulation], which ranks letters as being among the signs, capable of being represented graphically, of which a mark may consist, provided that such signs are capable of distinguishing the goods and services of one undertaking from those of other undertakings," that Court's ruling said.

Bot backed the General Court's decision and urged the CJEU to follow it. He said that the case illustrated why full examinations were necessary and that blanket rules such as that applied by OHIM were inadequate.

"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," he said. "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."