Of models and makes: the saga continues?
The practice was spurred by two decisions of the NIPO appeal board refusing the marks L400 and S380 for the reason that they lacked distinctive character for class 12 goods (vehicles).
The decisions argued that that “it is common knowledge” that combinations of letters and numbers are used in “many industries, including the car industry” to distinguish the goods of individual manufacturers from each other. According to the board, this would affect the expectations of the average consumer, and he or she would perceive the subject mark only as an identifier for one of the holder’s different models. There was a need to keep such identifiers free for the use of others.
Since the board did not specify in which industries this was “common knowledge”, the administrative practice shift that followed involved general refusals of all marks consisting of combinations of letters and numbers for all goods in many different classes where the concept of “models” could possibly be an issue. Rather superfluously, the legal advisors also decided to refuse non-descriptive three-letter marks for vehicles, for the reason that they could be perceived as mere model indications.
After several years of persistent opposition by trademark holders and prosecutors the board finally offered some clarification in May 2010, when the mark SR8 was accepted for goods in classes 7, 9 and 11. At the same time the marks IS F and IS-F were accepted for class 12 goods.
“THE BOARD CONCLUDES THAT THE
IS-F CASE REPRESENTS A ‘GENERAL SOFTENING-UP’ OF THE PRACTICE THAT COMMENCED WITH THE L400 AND S380 CASES AND THAT THE MARKS THEREFORE MUST BE ACCEPTABLE.”
The board noted that descriptive abbreviations in the form of combinations of numbers and/or letters seemed to be common within the car industry. It was nevertheless accepted that the need to keep such indications free is largely taken care of by the provisions prohibiting registration of descriptive marks, and that non-descriptive abbreviations rarely are devoid of distinctive character.
The practice of refusing three-letter marks was abandoned after these decisions. Not knowing exactly what to make of them, however, the NIPO legal advisors upheld the practice of refusing combinations of letters and numbers for class 12 goods. With respect to other goods the practice seemed less than congruent.
Since then, the board has rendered a number of decisions gradually navigating away from the ‘model indication’ doctrine. First, in the spring of 2011, TCE was registered for class 12 largely for the reasons set out in the SR8/IS F cases (ie, that the mark was not descriptive).
Next, the mark R125 was refused because it was descriptive of class 12 goods. The board found that the combination would be perceived as meaning ‘racing’ and ‘125cc’. Some weight was also attached to the fact that it is common for motorcycles to use the cylinder volume in combination with one or two letters.
In five subsequent decisions, however, the following signs were accepted for class 12 goods: S5, S7, A7, A1, and OCS. The board does express some doubt with respect to the first four marks, but concludes that the IS-F case represents a “general softening-up” of the practice that commenced with the L400 and S380 cases and that the marks therefore must be acceptable.
This really should be the end of the story, and the status quo is seemingly restored: combinations of letters and numbers are registrable unless they are descriptive.
Some recent events do, however, engender some doubt still. In the past few months we have received provisional refusals from the NIPO where letter/number combinations were refused for goods in class 1 on the grounds that they are commonly used in the industry and, consequently, that they could serve the purpose only of distinguishing one manufacturer’s different goods from each other.
We hope and we believe that the refusals may be overcome by ways of arguments, but we cannot be sure, can we?
Steinar Lie is an attorney at law at Bryn Aarflot. He can be contacted at: sl@baa.no
