A good brand name, significant, different, interesting, easy to say and to remember, matching the company’s profile image does not always constitute a good trademark, which has to be available and distinctive in relation with the goods or services offered.
It has been a common practice for decades to use and file as a trademark an expression consisting of keywords referring to the designated goods or services, preceded or followed by a sequence using the initial letters of the words making up the word combination.
Such trademark, considered as a whole, had always been registered until the decision of the ECJ (1), ruling as follows that:
“[…] A word mark which consists of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, [is not distinctive or is descriptive] if the relevant public perceives that sequence as being an abbreviation of that word combination by reason of the fact that it reproduces the first letter of each word of that combination, and that the mark in question, considered as a whole, can thus be understood as a combination of descriptive indications or abbreviations which is therefore devoid of distinctive character.”
Since then, both Community and French IP offices refuse to register such trademark applications. The trademarks that were already registered are also vulnerable and could be cancelled for lack of distinctiveness by the courts, as was recently the French trademark STRATEGIES & INTERACTIONS IN COMMUNICATION – SIC registered for the following goods and services: education, providing of training, management, business communication, human relations, corporate communications consultancy.
“The addition of the abbreviation SIC, formed from the first letters of the combination of the three words and following them, cannot confer a distinctive character to the whole sign […], the mark at issue taken as a whole being recognizable as a combination of descriptive indications or abbreviations.” (2)
Behind this is the defence of general interests consisting in not unduly restricting the availability of descriptive signs (the requirement of availability) and in enabling the consumer or final user of the goods or services in question to distinguish those goods or services from other goods or services having a different origin (the distinctive function).
There is something illogical about considering that an element, taken in itself, has no descriptive meaning but becomes descriptive following the addition of descriptive word elements. This argument relies on the presumption of the ancillary position of the abbreviation, which is not so obvious.
Of course, the solution consists to file the abbreviation on its own and to use it together with its full name. It is very rare indeed that abbreviations or acronyms are meaningless for their owners, at least at the time of their creation.
Downsides of this case-law are:
- Creating a gap between the legal protection of the mark as it appears on the trademark registers and its actual use, which may mislead the holder as well as third parties on the scope of their rights;
- Saturating the trademark registers by granting monopolies to signs composed of two or three letters, while the mention of the corresponding full names, even if descriptive, could create conceptual differences that would avoid any likelihood of confusion for the relevant public.
A solution could be to allow the registration of such trademarks on condition that disclaimers be filed so as not to claim any protection on non-distinctive parts of the marks.
(1) ECJ, 1st March 2012, joined cases C-90/11 and C-91/111.
(2) First instance Court of Paris, 17 October 2013.