Trademark consisting of 1 or 2 letters is absolutely valid and it is wrong to assume that this type of trademark is devoid of any distinctive character. EU Court reiterated this concept with reference to trademark HP. Find out why.
More trademarks can be considered a family (or series) of trademarks when, for example, “they reproduce in full the same distinctive element with the addition of an element, graphic or word, which differentiate them from each other, or when characterized by the repetition of a single prefix or suffix taken from an original mark”.
When we file a trademark application, we claim products and services we wish to protect as belonging to one or more classes, according to the Nice Classification. It is important to bear in mind that that the fact that some goods (or services) are included in the same class is not necessarily an indication of their similarity.
Article 18, 1) of the EU trademark Regulation n. 2017/1001 provides that:
“If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use”.
Quite recently the Italian Corte di Cassazione informed us on the difference between the complex trademark and the composite trademark (judgements n. 1275 and 1276, both of January 25, 2016) and it precisely outlined the difference between the two categories of brands, which lies in the distinctiveness of the elements of which they are composed.
The owner of a trademark cannot prevent free circulation of its products after they have been placed on the market: this principle, called exhaustion of the right of a trademark, has some limita-tions. Let’s see them together.
In cases of homonymy of patronymic trademarks (namely trademarks consisting of name and surname or only surname) the other elements constituting the trademark can become decisive. We mention some judgments about it.
Trademarks with reputation have an ultra-class protection. First of all, a mark must be used in order to acquire reputation. The protection given by the law will be wider the more the mark will be known. In the protection of the trademark with reputation the law does not assume that there is a likelihood of confusion on the market.
It is necessary to distinguish two different cases, namely the registration as a mark of the name of an unknown person – in principle permitted by law – and the registration of the name of a well-known person, in principle forbidden by the law.