Practice Amendment Notice

PAN 10/06 - Issued 25 May 2006

This Notice affects Examination practice about Letter and numeral marks.

The practice on letter and numeral marks has changed. Therefore Chapter 6 of the Work Manual has been updated by replacing paragraphs 19.2.4 – 19.2.12 with new paragraphs and adding new text at paragraphs 19.2.5 and 19.2.12 as follows:

19.2.4 Two, Three (or more) letters presented as a descriptive abbreviation

The distinctive character of a mark must be assessed by reference to the mark as a whole. Accordingly, marks which include the name of a class of the goods/services in combination with letters which are made up of the initial letter of each such word, may be devoid of any distinctive character even if the combination of letters is not a known abbreviation for the words.

For example, "M.G.S. MISSILE GUIDANCE SYSTEM" has no distinctive character for electronic guidance systems. If it is not a known abbreviation, it may be the public would not penetrate the meaning of M.G.S. alone, but once combined with words describing the goods in question, the letters become no more than an abbreviation for the type of technical goods at issue.

This does not apply to abbreviations of words which describe organisations rather than goods/services. There would be no objection to "AA AUTOMOBILE ASSOCIATION".

Combinations of descriptive words (other than the name of the type of the goods/services) may be registrable in combination with initial letters even if the words alone would not be registrable, eg "BBFB Best Bank For Business" for financial services. Similarly, the Registrar has accepted the trade mark "BWC Beyond World Class" for business services even though the words "Beyond World Class" alone may designate the quality of the services. The same applies to goods, so the mark BCIB BEST COLA IN BRITAIN (for cola) would be accepted even though the words alone would not.

19.2.5 Single letter marks

There is no bar to the acceptance of single letters as trade marks. Each case must be considered individually. A single letter mark may be distinctive for a wide range of services. A single letter may be descriptive or non-distinctive for many goods, but may be acceptable for many other goods. Research is required in each case so as to avoid registering a descriptive indication as a trade mark. For example, the letter "K" appears to be a distinctive trade mark for footwear, but the letter "H" is a customary indication of a width fitting for shoes, and so would not be distinctive. However, the letter "H" would appear to be a distinctive trade mark for drinks. Particular care is required where the goods are technical items such as computers, machines, motors and tools, where particular letters often have a descriptive meaning or have become customary in the language or in the bona fide and established practices of the trade.

Where a letter is not distinctive, a plain rectangular or oval border is unlikely to make the mark distinctive. However, a fancy or unusual border may be enough. Colour may also assist in providing the mark as a whole with the necessary power to individualise the goods/services of one undertaking.

19.2 6 Numerals & Letter/number combinations

Numerals and letter/number combinations will be accepted as trade marks provided that they appear sufficiently random to individualise the goods/services of one undertaking. The distinctiveness of the mark must be assessed in respect of the goods/services at issue.

19.2.7 Five digit numbers & letter/number combinations

Five digit numbers, and combinations of numbers and letters will be regarded as having the necessary distinctive character unless the examiner is able to identify a specific reason why a particular combination would not be taken as a trade mark.

19.2.8 Four digit numbers & letter/number combinations

Four digit numbers will also normally be regarded as having some distinctive character, provided that they are random numbers, eg 1560, 8787 and not round numbers eg 1000, 2400 - which are commonly used in trade as mere model or product numbers for goods. Even round numbers may be distinctive for services and goods not usually sold under a model or product number such as food & drink. Numbers which are current or shortly forthcoming dates should be regarded as devoid of any distinctive character.

Combinations of 4 numbers and letters, in any order, (eg F120) may be regarded as having the necessary distinctive character.

19.2.9 Three digit numbers &letter/number combinations

Random three digit numbers, such as 159 or 343 may be regarded as having the necessary distinctive character. Round numbers (eg 100 or 120) will normally be regarded as devoid of any distinctive character as trade marks for goods. Even round numbers may be distinctive for many services and goods not usually sold under a model or product number.

Combinations of two letters and one number (eg EK5) may be accepted. One letter and two numerals (eg W70) may also have some distinctive character.

19.2.10 Combinations of one letter and one numeral

Combinations of one letter and one numeral may have the necessary distinctive character. So combinations, such as "Z7" for motor cars may be accepted and other straightforward combinations, such as "C6", may be distinctive for goods (like soft drinks) which are not frequently sold under a model code. Combinations of one letter and one number may also be acceptable for many services.

19.2.11 Two digit numbers

Two digit numerals may be devoid of any distinctive character because they are commonly used in trade as descriptions or else have become customary in the language or in the bona fide and established practices of the trade. However, they may be distinctive for certain goods and services (eg 77 for estate agents services or soft drinks).

19.2.12 Single digit numbers

Single numbers which involve little or no stylisation will often face an objection because many such numbers are used in trade to designate a characteristic of many goods (eg 6 = cylinders in an engine, 2 = litres of milk). However, each case must be considered individually. There may be occasions when a single number in relation to some services may possess the necessary degree of distinctiveness, eg '9' appears to be distinctive for recruitment services.