Letter Marks and Monograms – Trademark Registration in Tirupur
Letter marks and Monograms
“Mark” is defined to include letters and numerals. However they notoriously lack inherent distinctiveness on account of common and natural practice of firms and persons to use their initials on goods, letter paper and so forth, or to use them as symbols indicative of quality or of other characteristics. Instead of depicting two or more letters separately as letters, per se, the letters could be intertwined or interwoven into a single device, formed into a monogram. The Registrar considers a monogram mark as prima facie registrable as a device. On the other hand, loose representation of letters or numerals as marks stand on a different footing so far as registrability is concerned. Marks comprising mere alphabets or letters are not considered to be capable of distinguishing, unless the combined effect of the letters is a pronounceable word, like SEA, FAR, etc. The reason for this is that it is possible for a trader to use his initials or indicate the grade or classification number upon or in relation to his goods/services in the packaging invoice or other stationary. Accordingly, marks consisting of letters or numerals not permitted registration without evidence of capacity to distinguish. However, if there are four or more letters used in the mark, the objection of the Registrar will be weakened. There is “statistically much lesser possibility that more than one trader would wish to use the same four initials in the same sequential order in respect of the same or similar goods.”
Marks consisting of single letter or two letters will be generally regarded as “devoid of any distinctive character for goods because of the tendency, in trade, to use letters as model or catalogue references, unless otherwise shown by evidence of the trade practice. Two letter marks may be acceptable in respect of services, having regard to the practice of the trade. Four digit numbers per se (except which are round numbers such as 1,000, etc., which may be used as model or product number for goods) will be regarded as having some distinctive character. The Registrar, however considers that numbers which are current such as 2003 or shortly forthcoming dates such as 2004 or 2005 which may signify year of production or their expiry period etc., will not be considered distinctive.
For example, numbers, letters which may be used in trade for bona fide description will entail objections under section 9(1)(c) are:
- The date of production of goods/provision of services (e g. 2001, 2002). Size, eg. XL for clothes, 1600 for cars, 34R for clothing, 185/65 for types, Quantity, 20, 200 for cigarettes.
- Dates for printed matter eg. 1066 for history books, 1996 for wines, 2003 for anything.
- Telephone codes e.g. 022,011,033 etc.
- The time of provision of services, e.g. 8 to 10.
- The power of goods e.g. 115 (BHP) for engines or cars.
- Speed e.g. 386, 486, 586, 686, & 166, 266 for computers.
- Strength e.g. 8.5% for lager.
See AD2000 TM. Case,74 where objection was sustained for registration of the mark for all goods in classes 29, 30, 32, & 33.
The mark consisting of letters “P.R.E.P.A.R.E.” was refused registration as being devoid of distinctive character and the appeal dismissed.
Combination of Letters and Numerals or other composite marks
As already stated numerals or letters per se, are not prima facie considered to be capable of distinguishing. But combination of letters and numerals will be considered differently as a composite mark. Unique combination of letters and numerals may qualify for registration. Where a mark consists of different features and though each of the components may not be considered to be capable of distinguishing the mark as a whole in its entirety may be considered acceptable. The registration of such marks would give right only for the use of the composite mark and not for the separate integers. Section 17 confers on the proprietor exclusive right to the use of a trademark taken as a whole and provides that the registration shall not confer any exclusive right in a matter forming only a part of the whole of the trademark so registered except in circumstances mentioned in sub-section (2) thereof.
In Xe Trade Mark, the applicant sought registration of the trade mark consisting of letters Xe. The appointed person, sitting as the appellate authority reviewed the practice of the trade marks registry in the matter of registration of marks consisting of letters or numerals in the following terms:
Letters and Numerals
Whether a letter or numeral mark can be registered prima facie will therefore depend upon whether it is devoid of any distinctive character. Letters and numerals presented with additional features or which are intertwined, conjoined etc. and which have a trade mark character will be accepted.
In West (T/A Eastenders) v. Fuller Smith & Turner Ple.” the Court of Appeal held by the date of registration of the trade mark ESB had acquired a distinctive character to the average consumer as denoting the product of the respondent, the letters had become distinctive by use. It was also held that the defendant failed to establish that the letters ESB were a sign or indication customary in the current language or established practices of the trade.
Three letter marks
Three letter marks constituting a pronounceable word should be accepted in the prima facie case unless they are objectionable as descriptive words, acronyms, etc. If a letter mark consists of letters with dots in between, like P.E.N it will be regarded only as a letter mark and objected as such. Similarly, objection will prevail when all the three letters are in capital letters, unless the word is a dictionary word. Applicant may overcome objection by amending the mark, such as “KEK, PIV” etc, as “Kek”. “Piv”, where the first letter is in capital and the other two letters in small type.
Two letter marks
Marks which consist of two letters will also be rejected if they are descriptive abbreviations, acronyms etc. Where two letters form a non-descriptive word the mark test is not whether the letters can be pronounced but will be accepted. In this case the whether the letters are likely to be taken as a word by the public (see the decision of Robin Jacobs [sic] acting as the Secretary of State’s Tribunal in relation to Application No. 1409562) Marks consisting of two random letters will usually be regarded as devoid of any distinctive character for goods because of the tendency, in trade, to use letters as model or catalogue references (and because of the limited number of combinations of two letters). However, letters are not commonly used as model and catalogue references for all goods. Two random letters may therefore have distinctive character for goods such as foodstuffs and beverages, which are not generally indexed in this way. Two letter marks may also be acceptable for services.
If the applicant or his representative can show that the general use of letters in trade described above does not apply to the specific goods listed in the application there may also be grounds for accepting two letter marks for other goods”.
In the Diamond T Motor Co.’s Appl a diamond border device, word diamond and with a single letter T inside the device was allowed registration without exclusive right to each separate component. The mark as a whole was considered capable of distinguishing while the individual elements were not.
Special provision for letter or numeral marks for textile goods in India
Special provisions governing registrability of trade marks in respect of ‘textile goods which were contained in the Trade Marks Act, are now omitted under the Trade Marks (Amendment) Act, 2010. As such, registration of trade marks in respect of such goods will be governed by the general provisions as applicable to all goods and services.
In the matter of letter or numeral marks, special provision had been made in the Trade Marks Act and Rules in respect of “textile goods”- see old sections 79 to 82, read with old rules 141 to 146 governing registration of such marks. The rules 141 to 146 of Trade Marks Rules, 2002 for Special Provisions of Textile Goods have been omitted in the new Trade Marks Rules, 2017. The goods falling in classes 22 to 27 of the Fourth Schedule to the Rules were classified as textile goods for purposes of special provisions. For Trademark Registration in Tirupur, kindly visit our website and feel free to contact us. Thanks for reading……..