Practice Amendment Notice

PAN 9/02 - Issued 17 October 2002

E, I and M Prefixed Marks

• This PAN replaces PACs 12/00 and 3/01.
• It is common knowledge that 'e' as a prefix denotes 'electronic' in the context of conducting business through an electronic medium and there are now a number of acronyms and terms which use 'e' in this sense, for example, e-commerce, e-mail, e-learning, e-software. This is supported by the following definition for 'e' from the New Oxford Dictionary of English:
  
  "'e' - denoting the use of electronic data transfer in cyberspace for information exchange and financial transactions, especially through the Internet."
  
• The letter 'i' has now become a generic abbreviation for 'internet' for example, i-tutor, i-music, i-magazine.
• In addition the letter 'i' is also an abbreviation for 'interactive'.
• An application for a word which describes the goods or services applied for and prefixed with one of these letters may be objectionable under Section 3(1)(b) and (c) of the Act, and in some cases 3(1)(d) may be appropriate.
• When considering an application the context of the mark and the specification is important. Much will depend on whether this is the usual way of referring to the goods or services.
• The internet will be searched where necessary, but it should be remembered that the fact that a term is not already in descriptive use does not preclude an objection under Section 3(1)(c) if the likelihood of normal descriptive use of the term was foreseeable at the date of the application.
• In general, it is more likely that an objection will arise when the letter 'e' or 'i' (upper and lower case to be treated the same) is combined with a description of a service or of goods used in e-commerce, particularly goods classes 9 and 16 (including the subject matter in class 16) and the services in class 38.
• However, each case must be treated on its merits. So, for example, there would be no objection to e-doors or e-soap because, (1) these goods are not particularly associated with e-trading and, (2) doors and soap sold over the internet are the same as doors and soap sold any way. Both considerations are relevant.
• However, e-software, e-book and e-learning are open to objection.
• Care should also be taken when examining applications with the prefix 'm'. The letter 'm' is now increasingly being used as an abbreviation for 'mobile' (as in mobile phone) and terms such as m-banking, m-payments and m-commerce are used to describe services provided via a mobile phone.