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ADWABAR? Are descriptive words accompanied by abbreviations registrable?

New Examination Guidance has been issued by the UKIPO so descriptive words paired with corresponding abbreviations, acronyms or initials will face an objection under Section 3(1)(b) and (c) of the New Examination Guidance has been issued by the UKIPO so descriptive words paired with corresponding abbreviations, acronyms or initials will face an objection under Section 3(1)(b) and (c) of the Trade Marks Act 1994.

This follows a recent CJEU judgment in C-90/11 and C-91/11 Deutsches Patent und Markenamt and Securvita Gesellschaft zur Entwicklung alternative Versicherungskonzepte mbH v Öko-Invest Verlagsgesellschaft mbH.  The CJEU held that a mark must be refused under Articles 3(1)(b) and (c) of the Directive where it consists of a descriptive word combination and a non-descriptive letter sequence and the relevant public perceives that latter sequence to be an abbreviation of the descriptive words because it reproduces their initial letters.

Previously, when assessing the distinctiveness of such a mark, the UKIPO has taken into account the nature of the goods or services claimed and the extent to which abbreviations are likely to be used in the relevant sector.  The CJEU decision makes no such distinction.  It also does not cover marks only facing an objection under Article 3(1)(b) because they are devoid of distinctive character.  Therefore, when examining such marks, the UKIPO intends to continue to consider factors such as the nature of the goods and whether they are likely to be referred to in trade by abbreviations, acronyms or initials.

Furthermore, the case is silent on marks containing acronyms (i.e. initial letters which combine to form a pronounceable word). The UKIPO thinks there could be circumstances where use of an acronym may add an element of word-play, humour or inventiveness into the mark rendering it inherently registrable.  Each case will be assessed on its own merits.

As ever, descriptive or non-distinctive marks will be registrable if it can be shown that the mark has acquired a distinctive character through use.

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