Trademarking a Single Alphabet – Are Graphic Effects Distinctive Enough?

Posted on July 29, 2020

Authored by Tanya Varshney

One of the fundamental rules of trademark law across jurisdictions is that a trademark must be a distinctive. In India, a mark being “devoid of any distinctive character” is an absolute ground of refusal for a trademark application[1]. However, often popular brands are recognizable on the basis of marks used by them consisting of single alphabets or symbols depicted in a stylized matter.  For instance, the following marks have come to be widely associated with their respective brands:

MarkBrand
Facebook
Motorola
Google
Pinterest

These brands are undeniably globally renowned and most of us would be able to instantly associate the above-mentioned single letter marks with their respective brands. Thus, even though these marks are technically claiming exclusive rights in a stylized depiction of an alphabet (which would be inevitably used by people), because these marks are ‘well-known’, they have acquired distinctiveness. The proviso to Section 9(1) of the Trademarks Act, 1999, in this regard, also acknowledges that “a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark”.

Interestingly, a search on the WIPO Global Brand Database revealed that the above brands have actually applied for and successfully secured registrations for their single letter trademarks. For instance, the marks , etc. have been registered by Facebook Inc. in many jurisdictions. In standard word descriptions of these device marks, ultimately the sole alphabets are provided (for instance, with Facebook’s marks, the mark description is ‘f’). This raised some pertinent questions – (a) whether ordinary brands (that have not acquired a well-known status for their marks) would be able to secure trademark registrations if their mark is a stylized depiction of an alphabet, and (b) whether these above-mentioned brands would be able to oppose or litigate against other marks which are stylized depiction of their respective alphabets/letters and whether the standard for comparison would be higher and stricter? This article aims to analyze these questions with the help of judicial precedents across the world.

Acronym Trademarks

Jurisprudence with respect to validity and enforcement of acronym trademarks is slightly more accessible than jurisprudence with respect to single letter trademarks. However, the reasoning provided by the courts in such cases provides useful insight into the crux of this article. In Tube Investments of India v. Trade Industries, Rajasthan[2], the Supreme Court sought to decide whether it was a case of trademark infringement between the two marks:

Plaintiff/AppellantDefendant/Respondent
Trademark is not available, however, the court described it as “In the respondent’s mark also, ‘T’ is a capital ‘T’ and ‘I’ is a capital ‘I’ and is shorter and placed below ‘T’. The respondent contends that he uses only one circle around his mark instead of two concentric circles.”[3]

The Supreme Court ascertained that the rival marks have significant visual similarities and the nature of goods sold under the rival marks are similar. The appellant’s mark was registered in 1972 whereas the respondent filed its application in 1984 but withdrew the same later due to an opposition proceeding by the appellant. In view of this, the court found that the appellant’s mark had superior rights.

In G.M. Modular v. TM Marketing[4], the court had to assess the trademark dispute between the “GM” device mark and “TM” device mark. The Plaintiff filed a suit for passing off of the trademark and copyright infringement suit. The Defendant contended that the “TM” are ordinary letters which are insufficient to amount to copyright infringement and that the Plaintiff cannot claim exclusivity over the font. The essential features of the “GM” device mark and “TM” device mark were stated to be “G Magic” and “Touch Me” respectively. It was further contended that the test for comparison of marks consisting or ordinary letters of alphabets ought to be different from the test applicable to work marks having phonetic similarity. The court observed that if the rival marks are identical, there would not be any need to inquire into deception or confusion whereas if the marks are deceptively similar, it would be important to assess the likelihood of confusion. In this background, the court noted that there are visual similarities between the rival marks including the colour of the background, similarity of letters “GM” and “TM”, and manner and style of the rival marks. Thus, the court passed a favourable order for the Plaintiff.

More recently, a trademark infringement suit was filed by the clothing brand H&M against HM Megabrands.[5] In defense, the defendant argued that “no person can claim exclusive rights to the acronym / two letter mark ‘HM’ or ‘H & M’ or that the alphabets ‘H’ and ‘M’ do not have any trade mark significance; that the mark ‘H&M’ being a two letter mark is not registrable under the Trade Marks Act, 1999 and is inherently not distinctive or capable of distinguishing the goods / services of the plaintiffs from those of others”. Interestingly, the court observed that ‘H&M’ or ‘HM’ are not generic or publici juris to the trade or business of garment manufacturing. In particular, the court stated “a word, even if generic, if applied to a business with which the word is unrelated, is indeed to be protected. Merely because it is alphabets or acronym, is immaterial”. It does beg the question – what alphabets would be related to the garment business, perhaps ‘c’ for clothing, ‘g’ for garment or ‘f’ for fashion? This seems rather peculiar as, more often than not, single alphabets would be unrelated to any business.

Letter as a Concept – CJEU Chimes In

In Kiosked v. European Union Intellectual Property Office[6], the question of trademark infringement with respect to two figurative ‘K’ marks was raised before the Court of Justice of the European Union (“CJEU”). The details of the rival marks are as follows:

ApplicantIntervener/Opponent
 

The Applicant had applied for an international trademark registration which was successfully opposed by the Intervener on the basis of its earlier ‘K’ marks. The Applicant then appealed to the EUIPO. The EUIPO also upheld the opposition order on the ground that there was a “lower than average” degree of visual similarity and that neither of the marks had acquired inherent distinctiveness, thus, there would be chances of confusion and deception between the two. Ultimately, superior rights were accorded to the earlier trademark. The common elements also included the figurative depiction of ‘K’ in white over a black background.

The CJEU, while examining the rival marks, reiterated the principle that assessment of likelihood of confusion must be based on the overall impression given by the marks and giving due weight to the distinctive and dominant elements. The CJEU disagreed with the EUIPO that since the disputed marks are purely figurative, the degree of comparison may be “lower than average”. The court found that the common element between the two was essentially ‘K’ along with the colour scheme. However, there were also differences such as the vertical and diagonal lines as well as the rounded edges versus sharp edges. Additionally, the court found that the Applicant’s mark’s black background resembled a “speech bubble” while the black background in the Intervener’s mark did “not have a specific geometric form”. The court found these differences to be significant enough to conclude that the rival marks are not identical and that the standard of degree of similarity “must be atleast average”. Although, phonetically, the court found the marks to be identical as both of them are a figurative representation of ‘K’.

Interestingly, the court, on the point of conceptual comparison, stated “as regards the conceptual comparison of two marks which consist of the same single letter, it must be stated that the graphic representation of a letter is likely to evoke a very distinct entity in the mind of the relevant public, namely a particular phoneme. In that sense, a letter refers to a concept”. Boldly stating that a single alphabet could be equivalent to a concept, the court found the rival marks to be conceptually identical. It was, however, argued by the Applicant that the rival mark lacks distinctiveness as it consists of a “very ordinary and common sign, namely a capital letter ‘K’” and that such a single alphabet is an “inherently weakly distinctive element”.

However, finding identical status in two out of the three points of comparison coupled with the similarity in the nature of services offered under the rival marks, the CJEU upheld that there would be likelihood of confusion. It is pertinent to note that the court sought to expressly refuse to give any ruling concerning in which circumstances a letter of alphabet must be regarded as having inherent distinctiveness.

Conclusion

It is evident that several brands use either single alphabets or acronyms of their trade/corporate name as their brand logos. However, it would be rather extreme to suggest that someone could claim monopoly over a letter with respect to certain goods and services. For instance, if a search engine were to use a stylized version of the letter ‘G’ as their logo, chances are that Google would be able to successfully oppose it. Thus, the idea of a ‘letter as a concept’ and assessing conceptual similarity on the basis of using a common letter seems somewhat absurd. On the other hand, refusing registration of trademarks which are stylized/figurative versions of alphabets, symbols, letters, etc. also seems absurd.

Thus, it is the author’s opinion that the standard of comparison with respect to such marks should be stricter. Some factors that should be given importance are the nature and similarity of goods and services; the colour scheme; the graphic effects surrounding the single alphabet/symbol/letter; and the popularity of the brand or trade mark. However, the comparison in such cases should not be made on the basis of phonetic similarity or conceptual similarity because that would allow the earlier trade mark owner to assert a monopoly over a letter in essence.

The author also opines that validity of a trademark application seeking to secure registration of a single letter trademark ought to depend on (a) existence of any unique dominant elements aside from the alphabet, (b) distinctiveness of the graphic effects added, (c) presence of any distinguishing elements such as colour scheme, font size, background design, etc., and (d) the popularity of the brand. Otherwise, allowing registrations of single letter trademarks which do not have any unique elements but basic graphic effects might lead to such applicant claiming monopoly over the said letter in their subject class of goods/services.

To conclude, it is argued that the courts need to pick up where the CJEU left off – the burning question of “in which circumstances a letter of alphabet must be regarded as having inherent distinctiveness?”.


[1] Section 9(1)(a), Trademarks Act 1999.

[2] (1997) 6 SCC 35

[3] Ibid, paragraph 2.

[4] 2007 (35) PTC 406 (Del.)

[5]H&M Hennes & Mauritz Ab & Anr v. Hm Megabrands Pvt. Ltd. & Ors, 2018 SCC OnLine Del 9369

[6] Case T-824/16, Judgment of the General Court (Fifth Chamber) of 13 March 2018.

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