Initials are eligible as trademarks. Our clients often ask us how initials are considered in practice. This article describes how these particular signs are treated by the OHIM and the trademark office.
Distinctiveness of single letters
The OHIM considers that single letters are devoid of any distinctive character. Examiners justify their position by pointing out that a limited number of letters should remain available for use by all players on a given market. Community case law remains consistent on this issue and constantly rejects such trademarks. As an example, Community trademark applications for the letter E or I were recently rejected.
Single letters can be registered if trademark protection is sought in a sufficiently stylized shape. In other words, the overall graphic impression must prevail over the mere existence of the single letter itself.
Limited scope of protection of single letters
The position of Community case law on whether likelihood of confusion exists between two trademarks having an identical, but differently stylized letter, has not been clearly established.
The OHIM has considered as dissimilar trademarks with the stylized Q letter (First Board of Appeal, June 30, 2008) and with the stylized S letter (Opposition Division, June 8, 2007).
But other decisions have regarded as similar trademarks with the stylized letter N (Fourth Board of Appeal, July 14, 2008) or trademarks with stylized letter B (Opposition Division, June 12, 2007).
Limited scope of protection of a group of letters
Owing to the lack of distinctiveness associated with single letters, case law generally considers that short marks comprised of a limited number of letters only enjoy limited distinctiveness. As a result, changing one or two letters or even maintaining the same letters, but placing them in a different order, is sufficient to regard two marks as dissimilar. In such circumstances, examiners take the position that in short marks, even slight differences can have a major impact upon consumer’s perception. The Second Board of Appeal, for example, regarded the marks LPGA and PGA as dissimilar, even though the products and services concerned were identical and highly similar.
However, certain circumstances may lead examiners to retain likelihood of confusion. Certain letters may be regarded as visually very close and phonetically similar. The Fourth Board of Appeal thus considered the marks NKS and MKS as similar. The particular reputation of the prior mark may also be viewed as a reason to sustain the risk of confusion. On November 26, 2008, the Court of Appeal of Paris interestingly pointed out that the mark ITAT was an imitation of the earlier mark TATI, in light of this mark’s very strong distinctiveness and high public awareness.
Influence of the extensive form behind acronyms
Applicants may be well advised to first think twice before including the words corresponding to the acronyms for which protection is sought in a bid to differentiate their marks from earlier registered trademarks. On March 4, 2009, the Community Court of First Instance held that the marks PTR PROFESSIONAL TENNIS REGISTRY and RPT REGISTRO PROFESIONAL DE TENIS were dissimilar. The CFI first considered that the acronyms PTR and RPT were sufficiently dissimilar. It was also considered that the inclusion of the phrases ‘Professional Tennis Registry’ and ‘Registro Profesional de Tenis’ had in fact no effect on the Court’s assessment of the likelihood of confusion.
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