The scope of protection of a letter “B” as a mark cannot exclude from registration every other mark which contains that letter

By two twins-decision of 16 December 2014 (full text here) the OHIM Fourth Board of Appeal rejected oppositions against applications for registering two figurative marks consisting in a letter “B” inscribed in the shape of a bottle cap or placed in the centre of a wax seal, both for beers and alcoholic beverages. The grounds for the opposition were those laid down in art. 8(1)(b) CTMR: as the opponent was holder of a community figurative trade mark shaped by a letter “B” in the form of a rhombus, he claimed a likelihood of confusion between the signs. The Board argued that the distinctive character of a single letter on a rather simple geometrical shape is below and not enough to justify a likelihood of confusion. In principle, the public will not associate a single letter with an indication of origin. As a consequence, the scope of protection of a single letter as a mark cannot be such that it excludes from registration every other mark that contains that letter. The Board’s reasoning takes into account, at least implicitly, the public interest in keeping alphabetical letters free from private exclusive appropriation and gives a positive outcome in the direction of a public domain’s recognition and protection against misappropriation in trademark law.

Jacopo Ciani

Fourth Board of Appeal, 16 December 2014, R 1007/2014-4, Dibevit Import S.r.l. v. Berentzen-Gruppe Aktiengesellschaft

The Principality of Monaco fails to register its own name as a community trademark

By its judgment of 15 January 2015, T‑197/13 (full text in French here) the General Court of the European Union rejected the opposition against the decision of the OHIM Fourth Board of Appeal of 29 January 2013 (Case R 113/2012 4), refusing the international registration (designating the EC) of the word mark MONACO, for lack of distinctive character. The decision confirms the previous ruling in Windsurfing Chiemsee (C-108/97) and Cloppenburg (T‑379/03): there is a general interest in keeping geographical names free from any exclusive appropriation as trademarks, provided that they have the ability to reveal products or services’ qualities and other characteristics and to influence consumer preferences by associating them with a geographical place which can elicit positive feelings. On this basis, Article 7(1)(b) and (c) Reg. No. 207/2009 on the Community trade mark should preclude the registration of geographical names which designate geographical locations, already famous or known for the category of goods or services in question, and which, therefore, have a meaningful connection with them. In these circumstances, the word ‘Monaco’ was supposed to designate, in the eyes of the public, the geographical origin of the category of services at issue and must remain available to other undertakings’ free and non-exclusive use. Another step forwards the recognition and safeguarding of a public domain’s space in trademark law.

Jacopo Ciani

 General Court (Grand Chamber), 15 January 2015, T‑197/13, Marques de l’État de Monaco (MEM) v. OHIM