This article looks at the different ways European countries treat the registration of a number as a trademark. Under the laws of most European countries, a number may be registered as a trademark if it is distinctive in relation to the goods and services covered by the application for registration. However, at least in one country (Switzerland), numbers are not registrable as trademarks even if they are distinctive in relation to the goods and services they cover.
The General Court of the European Union (GC) has held that numbers may be registered as Community trade marks (CTMs). Seven SpA v. OHIM
, Case T-176-10 (GC Oct. 6, 2011). Numbers are treated as signs under Community standards, and, as such, they must meet the requirements of Article 7 of the Community Trade Mark Regulation (Regulation No. 207/2009), which prevents the registration of signs that are not capable of indicating to the consumer the commercial origin of the goods and services covered by the application for registration. Therefore, a number may be registered as a CTM provided it is distinctive in relation to the covered goods and services (and, therefore, not merely descriptive of them).
Germany follows an approach similar to that of the European Union—that is, numbers can be registered if they are distinctive with respect to the goods and services covered by the application.
For example, in 2002, the Bundesgerichtshof (BGH) (German Federal Supreme Court) held that even the number 1 was distinctive for cigarettes, as that number did not relate to any indication concerning the quantity of cigarettes (cigarettes are not sold singly) or to other characteristics of the cigarettes. Case No. I ZB23/99 (BGH Apr. 18, 2002).
On the other hand, the Bundespatentgericht (BPatG) (German Federal Patent Court) held that the mark 18+ was not distinctive for computers, CDs, DVDs and telecommunication and Internet services (as well as for other goods in Classes 9, 35 and 38) because the term would be understood to refer to goods/services specifically intended for people over 18 years of age. Case No. 25 W (pat) 10/11 (BPatG Aug. 18, 2011). Similarly, that court held that the number 1 was not distinctive for goods in the automobile/vehicle field (Class 12) insofar as it related to engine volume or power (1.0 liter, for instance) or to other characteristics of vehicles. Case No. 28 W (pat) 72/03 (BPatG Oct. 1, 2003).
The requirements regarding registrability of numbers in Germany thus are the same as for word marks. The case law, moreover, does not make any distinction between whether the number is written as a digit or a word. Instead, registrability depends on whether the number is distinctive with regard to the goods or services claimed in the application.
The Croatian Trademarks Act provides that a number (whether expressed as words or digits) may be registered as a trademark as long as it is distinctive in relation to the goods and services covered by the application (and not merely descriptive of them). In practice, however, the Croatian State Intellectual Property Office usually does not examine an application for a single number or letter in relation to the cited goods or services. Instead, it typically rejects an application to register a number as a trademark without full examination. If an applicant responds to the initial refusal, an examination will be conducted at an upper level.
Based on information provided by the Croatian State Intellectual Property Office, following are examples of how applications for registration of numbers have been treated:
- DVA & Device (“dva” means “two” in Croatian)—a registration for the number in special typeface was granted for use in connection with paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; treatment of materials.
- 2 & Device—registered for the same products and services as DVA & Device, above.
- 1955—registered for products in Class 30, including coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
- 1950—registered for products in Classes 16, 24 and 25, including paper, cardboard and goods made from these materials, not included in other classes; textiles and textile goods, not included in other classes; bed covers; table covers; clothing, footwear, headgear.
- 57—registered for products in Class 30, including coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
In France, numbers can be registered if they are distinctive with respect to the goods and services covered in the application. In its decision of June 23, 2009, the Cour de Cassation, Chambre Commerciale (Supreme Court, Commercial Chamber), ruled as follows:
- Numbers are registrable as trademarks.
- A number making reference to a French province is distinctive if the application covers products and services that can be manufactured anywhere in France or abroad.
- A trademark comprising a number is not registrable if the number is intended to be used to obtain privileged and monopolistic access to a local market.
The trademark examined by the Supreme Court was the number 29, for clothing and footwear. French people commonly designate their region by a two-digit postal code. In this case, one of the parties claimed that because 29 was the code for the Department of Finistère, French consumers would recognize it as an indication of geographical origin and therefore would view the mark as such when it was used in connection with clothing and footwear. The Supreme Court, however, found the number distinctive not only for products manufactured in Finistère but also for products manufactured outside the area. It ruled that 29 was primarily a number and could not be unequivocally associated with Finistère.
The Swiss approach is totally different. The Tribunal Administratif Fédéral (TAF) (Federal Administrative Court) has held that single letters of the Roman alphabet (from A to Z) and numbers in the Arabic and Roman system (from 0 to 10) cannot be registered as trademarks. TAF B-55/2010 (G Fig); TAF B-1580/2008 (A-Z). According to the court, even if single letters and numbers are not descriptive of the designated products and services, they are ordinary and conventional signs lacking the necessary distinctive character. The TAF has noted that letters and numbers should remain freely available, as they are limited in their quantity.
The guidelines of the Institut Fédéral de la Propriété Intellectuelle (Swiss Trademark Office) incorporate these concepts in the section “Material Examination of Trademarks.”
In Turkey there are several registered trademarks that are either numerals, such as BMW’s model codes 114 and 216 and the well-known glue mark 404, or words, such as ONE, registered by BMW in Class 12. Numerical characters with descriptive additional elements also have been deemed to be registrable. No decisions against such registrations are known, and the Türk Patent Enstitüsü (Turkish Patent Institute) registered these trademarks without analyzing their distinctive character.
The Institute did, however, recently issue trademark examination guidelines in the context of the EU twinning project (which aims to help candidate countries develop modern and efficient trademark administrations), carried out together with the IRZ (German Foundation for International Legal Cooperation). The guidelines provide: “Numerals are, in general, registrable [the same] as any other word or figurative element, unless the number has, or might be considered by the relevant public to have, a specific (indicative) function in respect to the products applied for. The numerals that are written in a standard way (i.e., not written in a stylized way, have no original character), as a rule, shall be considered non-distinctive.” Guidelines Concerning Proceedings Before the Turkish Patent Institute para. 184.108.40.206 (Nov. 1, 2011). Thus, it is likely that in the future the Turkish Patent Institute will no longer simply grant registrations for numbers as trademarks without first examining them in relation to the products and services sought to be covered.
Denmark and Finland
The Danish Patent and Trademark Office held that the mark 42 lacked the required distinctive character for registration in Denmark. Provisional refusal of Application No. 924646, Feb. 14, 2008; confirmation of provisional refusal, Feb. 27, 2010. According to the Trademark Office, the number 42 did not fulfill the basic requirement that a trademark be capable of distinguishing the goods of a producer from those of other producers. Although, under the EU Trade Marks Directive, the Office should have examined the trademark in relation to the goods and services it covered, the text of the decision indicates that it failed to do so.
A decision of the Finnish National Board of Patents and Registration (NBPR) held that the trademark 2015 was not distinctive as it consisted only of that number. Confirmation of provisional refusal of Application No. 982448, Mar. 17, 2010. The Board concluded that the mark indicated the serial number, the price or the quantity of the goods, or the year 2015. It also took the view that the number 2015 be kept free for the marketing of goods. The trademark, therefore, was not likely to distinguish the goods of the holder from those of others. Again, in accordance with the EU Trade Marks Directive, the NBPR should have examined the trademark in relation to the goods and services it covered, but the text of the decision indicates that it failed to do so.
In principle, Denmark and Finland follow the EU Trade Marks Directive and examine trademarks in relation to the products/services applied for. In the cases referred to above, this was not done. Nonetheless, neither decision was appealed.
According to the General Court of the European Union, numbers should be examined in relation to the products and services they distinguish. This approach is followed in Germany, France and Croatia. Turkey, Switzerland, Finland and Denmark, however, currently follow different approaches. A party seeking to register a number as a trademark should be able to obtain it quite easily in Turkey, at least for the present. In Croatia, France and Germany and before OHIM (though probably after an initial refusal), an applicant will likely be able to obtain protection of a number as a trademark if the number is distinctive in relation to the products and services for which registration is sought. On the other hand, based on the decisions surveyed in this article, it will be difficult to obtain acceptance for registration for a number in Finland and Denmark, at least at the initial stage, and in Switzerland it may be impossible.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.
© 2013 International Trademark Association