Case T-23/07

BORCO-Marken-Import Matthiesen GmbH & Co. KG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for the Community figurative mark α – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94)

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character

(Council Regulation No 40/94, Art. 7(1)(b))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Signs capable of constituting a mark

(Council Regulation No 40/94, Arts 4 and 7(1)(b))

1.      Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, under which ‘trade marks which are devoid of any distinctive character’ are not to be registered, requires the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to determine, through an examination, on the facts, of the potential capacity of the sign at issue, whether the sign is incapable of distinguishing, in the eyes of the relevant public, the goods of the applicant for the trade mark from those of a different origin, since a minimum degree of distinctiveness is sufficient to prevent application of the absolute ground for refusal provided for in Article 7(1)(b) of that regulation. For the purposes of such an assessment, it is for OHIM, subject to review by the Court of First Instance, to have regard to all the relevant facts and circumstances.

(see paras 39-40)

2.      The refusal, as a matter of definition, to accept that single letters can have any distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, is contrary to the wording of Article 4 of that 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.

Furthermore, it is apparent from the case-law that Article 7(1)(b) of Regulation No 40/94 draws no distinction between the different categories of trade mark and that the criteria for assessment of the distinctive character of trade marks which consist of a single letter are the same as those applicable to the other categories of trade mark.

In order to have the minimum degree of distinctiveness required under that provision, the mark concerned must simply appear prima facie capable of enabling the relevant public to identify the origin of the goods or services covered by the Community trade mark application and to distinguish them, without any possibility of confusion, from those of a different origin.

(see paras 45-47)