Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v BORCO-Marken-Import Matthiesen GmbH & Co. KG.
Date: 2010-09-09
29. However, the fact that a sign is, in general, capable of constituting a trade mark does not mean that the sign necessarily has distinctive character for the purposes of Article 7(1)(b) of the regulation in relation to a specific product or service (Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 32).
31. According to settled case‑law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings ( Henkel v OHIM , paragraph 34; Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 66; and Case C‑398/08 P Audi v OHIM [2010] ECR I‑0000, paragraph 33).
32. It is settled case‑law that that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of them by the relevant public ( Storck  v OHIM , paragraph 25; Henkel  v OHIM , paragraph 35; and Eurohypo v OHIM , paragraph 67). Furthermore, the Court has held, as OHIM points out in its appeal, that that method of assessment is also applicable to an analysis of the distinctive character of signs consisting solely of a colour per se, three‑dimensional marks and slogans (see, to that effect, respectively, Case C‑447/02 P KWS Saat v OHIM [2004] ECR I‑10107, paragraph 78; Storck v OHIM , paragraph 26; and Audi v OHIM , paragraphs 35 and 36).
33. However, while the criteria for the assessment of distinctive character are the same for different categories of marks, it may 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 and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see Joined Cases C‑473/01 P and C‑474/01 P Proctor & Gamble v OHIM [2004] ECR I‑5173, paragraph 36; Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 34; Henkel v OHIM , paragraphs 36 and 38; and Audi v OHIM , paragraph 37).
34. In that regard, the Court has already stated that difficulties in establishing distinctiveness which may be associated with certain categories of marks because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law (see OHIM v Erpo Möbelwerk , paragraph 36, and Audi v OHIM , paragraph 38).
35. It is apparent from the case‑law of the Court on Article 3 of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the wording of which is identical to that in Article 7 of Regulation No 40/94, that the distinctive character of a mark must always be assessed specifically by reference to the goods or services designated (see, to that effect, Libertel , paragraph 76, and Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraphs 31 and 33).
37. In that regard, it should be pointed out that, even though it is apparent from the case‑law cited that the Court has recognised that there are certain categories of signs which are less likely prima facie to have distinctive character initially, the Court, nevertheless, has not exempted the trade mark authorities from having to carry out an examination of their distinctive character based on the facts.
38. In relation, more particularly, to the fact that the sign at issue consists of a single letter with no graphic modifications, it should be borne in mind 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 on the part of the proprietor of the trade mark (Case C‑329/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraph 41).
45. As is clear from the case‑law of the Court, the examination of trade mark applications must not be minimal, but must be stringent and full, in order to prevent trade marks from being improperly registered and, for reasons of legal certainty and good administration, to ensure that trade marks whose use could be successfully challenged before the courts are not registered (see, to that effect, Libertel , paragraph 59, and OHIM v Erpo Möbelwerk , paragraph 45).
59. As is apparent from that paragraph, it is only inasmuch as, despite OHIM’s analysis, an applicant claims that a trade mark applied for is distinctive, that it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has distinctive character ( Develey  v OHIM , paragraph 50).