It is typically very difficult, near impossible, to obtain registration for single letter trade marks unless they are heavily stylised.
For example, some notable single letter trade marks that are heavily stylised and have proceeded to registration in Australia include:
Australian Postal Corporation
480136
Toyota Jidosha Kabushiki Kaisha
509295
McD Asia Pacific LLC
326539
Often, it is a condition of registration that the trade mark includes an endorsement to the effect that the registration of the trade mark shall not give right to the exclusive use of the letter contained therein.
The Trade Mark Examiner’s Manual provides the following commentary:
Single letter trade marks without “get up” are generally not prima facie capable of distinguishing. The likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high (e.g. the letter M is commonly understood to indicate “mobile” in relation to phones and the letter E is commonly used to indicate a wide fitting in relation to shoes). One letter trade marks, unless represented in an unusual manner, generally possess limited inherent adaptation to distinguish and usually require evidence of use.
As the Trade Mark Examiner’s Manual notes, other traders may need to use a single letter in the form of initials or abbreviations and therefore such trade marks are typically objected to on the basis of lack of distinctiveness (section 41 objection).
However, this commentary, and objections raised by trade mark examiners can be overly pessimistic, especially in view of Wesbeam Holdings Pty Ltd [2006] ATMO 73.
In this Trade Marks Office decision, the Hearing Officer considered the use of the letter “E” in conjunction with the word “purlin” for roofing and beams – (for those not in the building industry, a purlin is a structural beam of a roof).
During trade mark examination, less weight is placed on components of the trade mark with a descriptive tinge in relation to the goods and services. In this case, the term purlin. This leaves the letter “E” to be considered.
Importantly, the Hearing Officer referred to the Trade Mark Examiner’s Manual and noted a degree of flexibility in deciding on their degree of inherent adaptation to distinguish. On one hand, if the single letter is highly stylized, it will add a significant amount of capacity to distinguish to a descriptive word. On the other, a simple letter “A” for instance, will add nothing to the construction (“A” is simply the indefinite article referring to a single member of the class of words immediately following, setting up a construction such as ‘a purlin’.) In this case, the Hearing Officer held that the letters “Z” or “C” would not add anything to the word “purlin”, as these two letters are in use in the trade as descriptive adjuncts to that word.
The Examiner noted that the letter “E” does not have any particular connotation in relation to the claimed goods and services. Adding it to a word descriptive of a piece of building material does add something to the construction. In this case, the Hearing Officer found that the addition of the letter “E” added enough to the construction of the trade mark to satisfy the Hearing Officer that other traders would not need to add the letter “E” to their products in this field.
This case highlights that single letters may be registrable in conjunction with descriptive words, where the single letter has no meaning or connotation in relation to the goods and services.
As a hypothetical example, if the goods of the “EPURLIN” application were in relation to electronic roof beam measuring or similar, the letter “E” would be considered a typical descriptor of “electronic” and the trade mark would face a section 41 (descriptiveness) objection. Only where the letter has no meaning or connotation to the goods and services may the trade mark be registrable.
Book a free consultation with the team at Kings IP today to discuss your trade mark.
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