by Marianna Katrakazi
Acronym is an abbreviation formed by the initial letters or components of a phrase or a word. Can such an abbreviation be registered as a trademark? Without further consideration, the answer would be negative, since an acronym has no specific meaning and consequently does not have the inherent capacity to designate goods or services. Nevertheless, many acronyms are used as global international market brands. For example, in the fashion market there are many worldwide known brands such as DKNY (Donna Karan New York), YSL (Yves Saint Laurent), and LV (Louis Vuitton) among others, whereas in the automobile industry there are some well-known acronym-trademarks like BMW (BayerischeMotorenWerke) and VW (Volkswagen).
In fact, many legal systems provide the registration of acronyms as trademarks. In Greece, the Article 121 of Law no. 4072/2012 states, inter alia, that “[…] words, names, legal names, designs, illustrations, aliases, letters […] may constitute a trademark”. That is to say that the acronym which is composed by a series of letters falls within the scope of the said Article. Similar protection exists under the French Law [1] and the American Law [2]. This protection is helpful for many companies, which often prefer to develop a protectable brand in the company name’s acronym composed by generic terms.
The conditions for registering an acronym as trademark are as follows:
At first, the acronym should be able to designate the goods/services covered by the trademark. Secondly, the distinctive character of the acronym must remain independent from the words which compose it. Even if the underlying words can be or have already been registered as a trademark, this protection is not automatically extended to the acronym. A separate application for the registration of the acronym is required. Besides, the Court of Justice of the E.U. held that a word mark is devoid of distinctive character when it consists of the juxtaposition of a descriptive word combination and the relevant public perceives that sequence as being an abbreviation of that word combination [3].
On the contrary, it has been accepted by American courts that an acronym can be filed as trademark even though the underlying words are devoid of any distinctive character [4]. Consequently, whether an acronym can be registered as a trademark must be assessed independently of the words which compose it. The only way for a company to extend trademark rights to the acronym of its registered mark, even if the company did not use it, is to resort to the “public use doctrine”[5]. Namely, trademark rights on acronyms or abbreviated versions of a trademark might rise thanks to the extensive use of those abbreviations by the public. For example the trademark “Coke” for “Coca Cola” was born this way.
Upon registration, other issues regarding trademark protection such as counterfeits or unfair competition practices may arise. It is very difficult to interpret the risk of confusion on acronyms, so the in concreto assessment is necessary. Can such risk be excluded by adding one more letter or any other element? The similarity of goods/services is very important in order to examine the risk of confusion between two acronyms: French courts have stated that a risk of confusion exists between the company brand “IPME” and the sign “PME” which is frequently used for small and medium enterprises (petites et moyennesentreprises). On the contrary, such risk does not exist between the trademarks “FSF” and “FASF”, because the aim of those undertakings is different and there is no competitive relationship between them [6].
The use of acronyms as trademarks is of strategic importance for one company, due to their strong consumer appeal. However, the choice of an acronym as trademark is not easy and many factors must be taken into consideration. On the one hand, the combination of letters must be the best in terms of marketing, and on the other hand it must have a strong distinctive character in order to ensure efficient protection of the trademark.
[1] French IntellectualProperty Code, article L711-1 : «tous les signes susceptibles de représentation graphique, tels que les mots, les chiffres, les assemblages de lettres, peuvent constituer une marque».
[2] http://www.inta.org/INTABulletin/Pages/ProtectingAcronymsUnderUSTrademarkLaw.aspx
[3] CJEU, case C-90/11.
[4] Welding Services Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007).
[5] Public use doctrine, 4th Circuit in the George & Co. v. Imagination Entertainment Ltd. et al., 2009.
[6] http://www.usinenouvelle.com/article/peut-on-proteger-un-sigle-ou-une-abreviation.N39612
Photo credits: http://www.sporcle.com/