Are you wondering whether you can register a trademark consisting of only 1 or 2 letters? The answer is yes.
Trademarks consisting of 1 or 2 letters are valid and it is not correct to say that that they are devoid of distinctive character or descriptive because of their “shortness”.
Trademark consisting of 2 letters: the case Hewlett Packard
The General Court, with two judgments of 24 April 2018, (case T-207/17 and case T-208/17) confirmed the decisions issued by EUIPO, which rejected the application for the invalidity of the UE trademark n. 008579021 (classes 2, 7, 9 16, 35 to 38 and 40 to 42) and of the EU word mark HP n. 0052449 (classes 2, 9, 16, 20, 35-39, 41 and 42), filed by the Polish company “Senetic SA”, on the assumption of an alleged descriptiveness and lack of distinctiveness of the two brands.
“Senetic SA” claimed that, since the contested marks consisted of two simple letters, they were to be considered descriptive of technological products and services.
The Board of Appeal of EUIPO, when dismissed the appeal, specified that:
“It could not be generally stated that a mark lacks distinctiveness because it consists of one or two letters, without examining the specific relationship between the sign and the goods and services in question”.
The General Court, after having agreed the decision of the Board of Appeal, specifies that article 4 of Regulation No 207/2009 (now regulation n. 2017/1001) expressly states that an EU trademark may consist of “any sign…including letters” and that arguing that the mark consisting of one or two letters is descriptive in itself is in contrast with this article.
Furthermore, in this specific case, the General Court notes that it is possible that the HP sign be understood by the relevant public as a reference to the names Hewlett and Packard, the surnames of the company founders.
The General Court, moreover (paragraph 30, case T-207/17) specifies that
“the criteria for assessing the distinctive nature of marks consisting in one or two letters are the same as those that apply to other categories of marks” (see, by analogy, judgment of 29 April 2009, BORCO-Marken-Import Matthiesen v OHIM, T-23/07, EU:T:2009:126, paragraph 46)
If you want to file a trademark application consisting of 1 or 2 letters, Eva Troiani law firm is at your disposal to offer you all the necessary advice in order to obtain registration.
Before filing the application, the firm will assist you in the fundamental phase of the trademark search, performed in order to verify the existence of earlier marks that may hinder the use and registration of your trademark. Contact us for more information.
Parasitic unfair competition: what is the limit of similarity between activities in the same sector?
It is normal that there exists a certain degree of similarity between activities that, although belonging to different owners, are in the same field (for example, two supermarket or two perfumeries chains). The question is: to what extent your business can lawfully resemble to another one which is already in the market without incurring the prohibition of parasitic unfair competition.
For example what are the limits that cannot be overcome in setting up your store or in the organization of an exhibition? How to prevent your direct competitor from accusing you of having copied it and to have been not correct?
In order to avoid the accusation of parasitic unfair competition you certainly must avoid systematically imitating all that your competitor does and copying all his initiatives, studies and researches. The Courts have repeatedly considered as parasitic unfair competition the behavior of the suject
“who makes profit form the studies, the costs of preparation and penetration of others and, using the already experienced achievements, avoids the risk of failure”
(Italian Corte di Cassazione, 16 February 1988 n.1667).
Thus, for example, judges considered parasitic unfair competition the behavior of the one that used not only a distinctive sign identical to that of its competitor for the same type of product but used also the same decorative elements in the products, the same advertising images and, finally, the same methods of advertising promotion.
In another occasion the Court (Court of Milano, n. 11416/2015 of 13 October 2015) considered parasitic unfair competition the commercial activity of a chain of perfumeries imitating another chain of perfumeries in the following elements: identity in the clothing of the shop assistants; similarity of the format of the respective websites; imitation of the commercial activities (imitation od the commercial promotions of the competitor, also in the graphic and color configuration), imitation of the products (identical form, same names and recovery of the innovative products developed by the competitor).
Parasitic unfair competition often occurs in presence of a succession of imitative acts during a period of time but this does not mean that it is not parasitic competition:
“Activity that, in one fell swoop, or in a single moment, imitates “all” the initiatives taken by the competitor, provided that also in this case we can see the reprehensible systematic exploitation of the work and creativity of others”
“there is no reason to think that repetitiveness over time of several imitative acts is indispensable, since it is perfectly logical that sistematicity and continuity can also be simultaneous and expressed in the “quantitative imitation” characters”.
(Italian Corte di Cassazione 5852/84 and 1667/1988)
Eva Troiani law firm, in the event you think you are affected by unfair competition, can assist you with a legal opinion on the existence of the case of unfair competition and can suggest the most appropriate legal remedies.
When we talk about trademarks, there are many mistakes you should not do if you want to avoid problems. Let’s see the most common ten errors.
ERROR NUMBER 1: TO CALL A GRAPHIC FOR CREATING A TRADEMARK BEFORE HAVING A CHECK ON TRADEMARK’S REGISTRABILITY FROM THE LEGAL POINT OF VIEW
When it is decided to create a trademark it happens very often that the first step is to instruct a graphic agency for the creation of the logo.
Of course, it is not wrong to get in touch with a graphic; on the contrary, it is advisable to do so, but this must happen after and not before the choice of the words composing your brand.
Risks→The risk is that you invest money in the creation of a logo that could be invalid or reversed if it does not comply with the requirements prescribed by the law for its validity.
If you want to go more in detail:
which trademark and where
ERROR NUMBER 2: TO COPY THE MARK OF SOMEONE ELSE, WORSE IF IT IS A WELL-KNOWN MARK
Sometimes it is believed that it is a brilliant idea taking advantage of the reputation of an existing brand, so that we “create” a very similar mark which differs from the other one only for few elements of secondary importance (for example, our mark is made with another type of graphic or by adding or deleting an accent).
Risks→ Before doing as above, you should take into consideration that this kind of reckless operation put you in front of the risk to receive claims by the owner of the earlier trademark. In addition, if the earlier mark is a famous mark, you can be quite sure that its owner will probably have all the economic means to protect its rights…also to a Court!
If you want to go more in detail:
Birth of a trademark
ERROR NUMBER 3: TO CHOOSE DESCRIPTIVE MARKS
The law, not only in Italy but almost everywhere, provides that the mark must not be descriptive of the product (or service) that identifies or of one of its characteristics.
On the other hand, it is true that often for commercial needs we have the tendency to prefer brands which are somehow evocative of the product. In this field, there is a thin line between what is allowed and what is not.
The suggestion is to get in touch with a specialized advisor who, in front of the concrete matter, will be able to suggest the best way, by choosing a brand which is acceptable from a legal point of view.
Risks→ you risk that your brand is not registered by reason of its descriptiveness or, even if registered, is declared invalid for the same reason. From the point of view of marketing, your brand could be not sufficiently original to catch the consumer’s attention
If you want to go more in detail:
Descriptiveness and suggestive power of the mark
ERROR NUMBER 4: NOT TO VERIFY THE EXISTENCE OF EARLIER MARKS, POTENTIALLY DANGEROUS
Out of the case of error number 2, which implies the awareness and intention to violate the rights of others, there exists the (very common) case of the lack of a trademark search which is necessary in order to verify whether there are earlier marks which can be dangerous for the use and registration of your mark.
First of all, the verification must not be made only empirically on the market, for example by controlling the competitors on the web, but, above all, it is a search among the marks filed/registered in the Registries of the territory of interest. For example, if you wish to protect a mark in Italy, the search should be conducted among all the trademarks with effect in Italy, namely Italian marks, E.U. marks and international marks with effect in Italy.
Risks→ Also in this case, you may be attacked by the owners of earlier marks, which could prevent you the use and registration of your mark. Before making investments in advertising and launch your brand in the market, check if and to what extent it is incontestable by the legal point of view, otherwise you risk frustrating your efforts and investments….
If you want to go more in detail:
ERROR NUMBER 5: TO CHOOSE QUESTIONABLE TRADEMARKS WITH THE RISK THAT THEY ARE CONSIDERED UNLAWFUL AND THEN INVALID
Sometimes we make questionable choices, beyond the bounds of good taste, and we think to create a very provocative trademark, with a strong commercial impact.
It should always be kept in mind that the law requires that the trademark is lawful, namely not contrary to the law, public order and morality.
The Court of Justice has confirmed the invalidity of the brand (due to its contrariety to public order) of a chain of Spanish restaurants named “mafia sits at the table” and has highlighted how such brand trivializes serious phenomenon of organized crime and conveys a non-educational message.
Risks→Be careful when you create trademark with a highly provocative message; whether the Examiner of trademark application considers it unlawful, it will reject the application for registration.
Furthermore, in the event you obtained the registration, your trademark could be declared invalid at a later time.
If you want to go more in detail:
ERROR NUMBER 6: UNDERSTIMATE THE IMPORTANCE OF THE LIST OF PRODUCTS AND SERVICES WHEN YOU FILE A TRADEMARK APPLICATION
It is very important to write an exact and complete definition of the products or services that your mark will distinguish in order to obtain an adequate protection for your needs.
So called “list of products” defines the limits of the protection of your mark and, for this reason, it must be complete and consistent with the requirements of the office that will examine your trademark application.
Remember that the rules for a proper identification of the products (and services) may vary from one State to another: for this reason, I suggest you to get in touch with a trademark attorney (or an attorney with experience in Intellectual property) who can assist you in this very delicate phase.
Risks → During the exam of your trademark application the Examiner can raise an objection against the list of product or service of your mark. Even more serious, the omission or incorrect identification of the products and services protected by your mark can cause serious deficit of protection.
If you want to go more in detail:
ERROR NUMBER 7: TO FILE A NATIONAL TRADEMARK APPLICATION AND TO BELIEVE TO BE PROTECTED EVERYWHERE
In the field of trademarks there exists the principle of territoriality, which means that your mark will be protected only in the State where you have filed a trademark application.
Therefore, if you are the owner of an Italian trademark, the protection of your brand will be limited to the Italian territory. This means that if you export products with your brand abroad you have to be worried to protect your brand also in the State (or States) where you sell or where you are planning to sell.
During the phase of internationalization there are many options to take into consideration, both because there are solutions that allow you to obtain protection in several States with a single trademark application (typically, this is the case of the E.U. or the International trademark) and because the rules to follow may vary from State to State, both at the level of documents to be produced (sometimes notarization and legalization may be required) and at the level of prohibitions to be observed (for example, the non-registrability of the class of alcoholic beverages in Saudi Arabia).
Risks → If you do not file your trademark in the State in which you use your mark, you run the risk that someone files before you a trademark identical or similar with yours, causing many relevant problems to your position. In absence of a registration, moreover, it can also be more complicated to attack the counterfeiters of your mark.
If you want to go more in detail:
Types of trademark
ERROR NUMBER 8: TO USE YOUR TRADEMARK ABROAD, ESPECIALLY IN COUTRIES WITH AN HIGH COUNTERFEITING RATE, AND DO NOT REGISTER YOUR TRADEMARK THERE
We often use our brand abroad and we do not bother to register it. It is clear that there are many risks, especially in countries with an high level of counterfeiting.
It may happen that someone sees your trademark and decides to take it. Sometimes it happens that the local distributor with whom you have contacts to warn you that there exists a brand identical with yours, registered by someone without your authorization.
Other times it happens that the agent or local distributor files the trademark application in his name without having received any authorization from you.
Risks→it is not sure that it will be possible to recover your brand and, even if it happens, this will certainly involve an increase in your costs.
Moreover, do not neglect the possibility that who usurped your trademark can discredit your reputation by placing low quality products on the market.
If you want to go more in detail:
Registering a trademark in bad faith: abuse distributor’s position
ERROR NUMBER 9: TO THINK THAT YOUR MARK CAN “PROTECT ITSELF BY ITS OWN”
Unfortunately, the mere fact of being the owners of a trademark does not protect you, for this sole reason, from counterfeiters and violations of your trademark rights.
For a start, as a rule no one tells you if someone else files a mark identical to or similar with yours. If you want to be promptly informed, you must – also in this case through your trademark attorney or attorney specialized in trademarks – to put your trademark “under surveillance”, in order to be informed as soon as a trademark which is identical to or similar with yours has been filed.
Another bad news is that you must act in order to protect your mark from counterfeiters. Of course, the support of your consultant will be crucial to evaluate whether there are the conditions for initiating an action against someone else, and, in the affirmative, what kind of action and how many chances of success you may have.
Risks → It is a nonsense to be the owner of a trademark and not to do anything to implement the protection of a trademark. You run many risks if you remain inert; among these I refer, only by way of example, the erosion of the value of your brand caused by the proliferation of similar marks in the market, the consumers’ confusion, the lost profits caused by the presence of counterfeiters. In addition, the trademark owner who usurped your trademark rights but arrived before you, could challenge the use and the registration of your brand in that Country. He could cause indeed many problems to your position.
If you want to go more in detail:
Defensive strategies of the brand
ERROR NUMBER 10: DO NOT ACT TEMPESTIVELY IN THE EVENT OF COUNTERFEITING
Sometimes, even if you know that your trademark has been counterfeited, you prefer to let it go and you hope that the problem will be solved by itself.
It a wrong and dangerous attitude, which can cause many unpleasant consequences.
For example, the coexistence on the foreign market of two identical trademarks (your trademark and the one counterfeiting yours) could easily create confusion in consumers. Furthermore, the existence of a trademark identical to yours can make difficult to reach commercial agreements with local distributors/agents/investors, who could refuse to share the market with a competitor using a trademark identical with theirs.
Risks → When you decide to challenge the trademark couinterfeiting your rights, you could no longer be able to do so due to expiration of the deadline, according to the law in that State.
If you want to go more in detail:
Trademark Oppositions proceedings in Italy
For more information:
- Tel. / fax: 06 58233422
Does it exist the European trademark? No. There exists the European Union trademark.
Difference between European Trademark and European Union Trademark
The difference is relevant, because it is necessary to bear in mind that the European Union Trademark Registration is effective not in all Europe, but only in the Member States of the European Union, which are: Austria, Belgium, Bulgaria, Cyprus, Croatia, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Holland, Poland, Portugal, Czech Republic, Romania, Slovenia, Slovakia, Spain, Sweden, Hungary. The United Kingdom, following Brexit, is going to leave the European Union and, unless changes during the negotiation, will become definitively a third State from 30 March 2019.
Article 1, 2) of the EU Trademark Regulation provides that:
“ An EU trademark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Union. This principle shall apply unless otherwise provided for in this Regulation”.
The European Union Trademark, therefore, is not effective in all those States that, although European, are not part of the European Union. This means that the European Union trademark does not give any protection in States such as Switzerland, Norway, Albania, Macedonia, Ukraine, Russia, just to name some of them.
How to obtain trademark protection in the European States which are not member of the European Union
There are several options for protection, which must be assessed case by case after having considered many relevant factors, related to the needs of the company which wants to obtain protection.
In the abstract, we can state that it is always possible to register a national trademark. This means, for example, that if I want my trademark to be protected in Switzerland, I will have the possibility to file a Swiss trademark.
Another possibility, if all the assumptions are met, is to protect oneself through the international registration. In this case, however, since many condition must be assessed – not least the economic convenience of the filing – we suggest to evaluate which is the best option of protection with the help of a consultant.
Eva Troiani’s law firm has the skills to offer you full assistance in this matter. Thanks to the network of agents in all Europe, the firm can handle the registration of your trademark both in the EU member States than in the European States which are not members of the EU.
- Tel. / fax: +39 06 58233422
The first section of the Italian Court of Cassation, by order n. 28818 of 30 November 2017, rules once again on a distinction which is often examined by the Italian case law, namely the difference between Weak trademark and strong trademark.
It is said “weak” the trademark with a low distinctive capacity, while it is said “strong” its opposite, namely the very distinctive trademark, usually because made up of fancy words (or other signs) or words that, despite being of common use, have not a conceptual link with the product and/or the service distinguished by the trademark.
In Italian case law it is a consolidated principle that “while for the strong trademark all modifications, even if relevant and original, but which leave unchanged the substantial identity or the expressive ideological nucleus constituting the fundamental idea on which the trademark is base are not allowed, for the weak trademark also slight modifications or additions are sufficient to exclude the confusion”. (Cass., Section I, 06/24/2016 n. 13170; 25/01/2016 n. 1267; 26/06/2007 n. 14787)
In this matter, the Court of Cassation has had the opportunity to specify that – in the comparison between two weak trademarks – even the presence of a purely descriptive expression as a constituent component of one of the two brands can have a decisive importance in distinguishing the later mark from the earlier mark.
In the present case, the later mark was composed of the combination of two terms, which, although both descriptive, gave rise to a combination which was considered as a whole sufficiently different from the earlier mark, a weak mark, in relation to which the danger of confusion has been excluded.
IT IS FORBIDDEN TO EXPLOIT MICHELANGELO’S DAVID’S NAME AND IMAGE WITHOUT AUTHORIZATION OF THE GALLERY OF THE ACADEMY OF FLORENCE
The Court of Florence, by order dated October 26, 2017 (RG.N. 13758/2017), stated, with reference to a travel agency which used the name and image of Michelangelo’s David for publicizing its business, the ban of use and reproduce on all the Italian and European territory of said image on flyers, sites and souvenirs, in the lack of authorization from the Galleria dell’Accademia of Florence.
In this case, a travel agency used the image of Michelangelo’s David for commercial purposes without ever trying to obtain the concession from the authority that has the property in hand, undoubtedly identifiable in the Gallery of the Academy in Florence.
The rule to be taken into consideration is the article 108 of Legislative Decree 42/2004 (Code of the Cultural Heritage) which makes subject to concession the reproduction of cultural assets for profit purposes. In fact, reproduction is free only if it is carried out without profit.
In the order the Court of Florence also ordered “the immediate withdrawal from trade and the destruction of all advertising material reproducing the image of Michelangelo’s David or parts of it, as well as all the tools used to produce and/or commercialize such products, everything with reference both to the company and to third parties which hold and/or have, however, the availability of such goods”.
Article 19 (2) of the Italian Industrial Property Code states that: “Who filed a trademark application in bad faith cannot obtain the registration”.
In detail, how is it possible to identify a case of bad faith?
The Court of Appeal of Milan (judgment of 9 December 2013, in r.g. 263/2011) states in that regard that “it is established that the filing in bad faith is only that of those who know that they (can) violate the right of another subject, while it is different the filing made by someone who knows the existence of a former trademark, but does not think to violate it for a reasonable reason”.
The awareness of being able to violate the right of others is, therefore, a presupposition and an integral part of the hypothesis of bad faith; this concept has been repeatedly emphasized by the case law. You can see, just of example, the Court of Rome (judgment of 17 February 2016, in r.g. 64105 of 2013), according to which: “It is known that the bad faith in the article 19 of the Italian Industrial Property Code makes reference to the registration in prevarication made by subjects already aware of the content and object of the trademark through manifestly fraudulent ways”.
With regard to the EUTM, bad faith is am absolute ground of invalidity of a trademark. Article 59, 1) lett. b) of the Regulation (EU) 2017/1001 of the European Parliament and of the Council states that: “An EU trademark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for trademark”
The same rule was in the Article 51, 1) lett.b) of the previous EU Regulation 40/94, which was interpreted by the Court of Justice in its judgment of 11 June 2009 in Case C-529/07 which clarified that, whether the applicant is acting in bad faith, it is necessary to take into account all the factors relevant in the moment of the filing of the application, particularly:
- “the fact that the applicant knows or must know that a third party is using, in at least one Member State, and identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought→ the presumption of knowledge, by the applicant, of the use by a third party of an identical or similar sign for which registration is sought…may arise, inter alia, from a general knowledge in the economic sector concerns of such use, and that knowledge can be inferred, inter alia, from the duration of such use: In fact, the more that use is long-standing, the more probable it is that the applicant will, when filing the application for registration, have knowledge of it. However that presumption is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith
- The applicant’s intention to prevent that third party from continuing to use such a sign→the intention to prevent a third party from marketing a product may, in certain circumstances, be n element of bad faith on the part of the applicant; that is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a EUTM without intending to use it, with the sole objective being to prevent a third party from entering the market
- The degree of legal protection enjoyed by the third party’s sign and by the sign for which the registration is sought”
According to the Lebanese law, marks can be names, symbols, letters, drawings and figures and any sign of any kind intended to bring benefit by distinguishing between things and showing the identity, source, origin of goods or the products.
One application can cover more classes of goods and/or services.
After the filing, the Examining Attorney makes a complete review of the mark, including a search for earlier conflicting marks.
In Lebanon it is not possible to file an opposition against a trademark application and the trademark is registered upon payment of the registration fees.
The term of duration of a mark shall be fifteen years from the registration and can be renewed indefinitely, each time for fifteen years.
According to the article 74 of the Lebanese trademark law, if a trademark legally filed does not cause objection within the five years period following the filing, it shall not be possible to object afterwards to the first depositor concerning the right of ownership of this trademark due to the precedence of its use, unless it is proved in written deeds that the depositor was not ignorant or unaware at the time of effecting the filing that the trademark belonged to the person who used it first.
The Court of First Instance of Milan (judgment n.6559/2017) examined the case of a single-brand shop which, as a franchisee of confectionary products, commercialized, alongside products with original brand, also products with no brand or bearing a counterfeit trademark.
The Court of First Instance has seen in the behavior of the single-brand shop the violation of the other party’s (from now on called “franchisor”) industrial property rights, because responsible for selling, in addition to the original products, also products coming from other companies, sometimes putting on such products the trademark of the franchisor, sometimes selling products with no logo.
The behavior of the single-brand shop has also included a series of contractual breaches of the franchising contract. Among the obligations of the contract there was also the article “to resell in the shop only the original products and not to sell any products in concurrence with those of the franchisor”.
In addition, the Court of First Instance upheld the arguments of the franchisor, stating that: “The single-brand store, with a policy of progressive “appropriation” of the goodwill related to the franchisor, gradually replaced the only legitimate supplier with other suppliers and has (illicitly) separated its business from that of the franchisor. So we can share what the franchisor says about the fact that a new confectionary shop should would take not less than two years in order to starting and progressively consolidate a competitive position”.
Lastly, the Court of First Instance recognized and quantified the existence of a damage to the image caused by the behavior of the single-brand store which put in place a variety of behaviors that led to the erosion of the value of the brand and of the brand image of the franchisor, among which offering for sale “a whole range of non-branded products, some totally not existing in the catalogues and belonging to different and completely extraneous categories (like liqueur), damaging the high position and the level of excellence of the brand and the products distinguished by the same”.
From 1 October 2017 some changes will occur in the field of the protection of the European Union trademark. In brief, three macro areas can be identified: changes in the rules concerning the graphical representation of the mark; introduction of the EU certification mark, some procedural changes.
Graphical representation: from 1 October 2017 EUIPO specifies that the signs can be represented “in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. In this way, some categories of trademarks become acceptable, particularly those trademarks which are not susceptible to graphic representation like, for example multimedia trademarks.
EU certification marks: According to the article 74a, 1) of the EU Regulation n.2015/2424 “an EU certification mark. .is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode od manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified”.
According to the article 74a, 2) “any natural or legal person…may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified”.
An applicant for an EU certification mark shall submit regulations governing the use of the certification mark within two months of the date of filing.
Procedural changes: Among the others (the following is not an exhaustive list) there are changes in the following areas: priority, acquired distinctiveness, opposition and cancellation proceedings, languages and translations, communication with the Office, Boards of Appeal.