(3) capable of functioning as a trademark

The Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has annulled an examiner's decision to refuse to register the sign '(3)' as a Community trademark for communications services in Class 38 of the Nice Classification.

The OHIM examiner refused the application filed by Level 3 Communications Inc on the grounds that the sign was devoid of any distinctive character. The examiner was of the opinion that numerals inside parentheses are commonly used to refer to ordinals. The examiner concluded that the sign was not capable of distinguishing Level 3's services from those of other undertakings.

This argument was "certainly not without logic" for the Board of Appeal. The board, however, saw an even greater logic in Level 3's counterclaim that a number enclosed in brackets is not likely to be perceived as an ordinal in the absence of any matter outside the brackets. Accordingly, the board concluded that (3) is capable of functioning as a trademark.

The board further repeated Level 3's argument that the availability of numbers in brackets for the purpose of indicating the position of an item in a list is unlikely to be restricted in any way, since such use would clearly not amount to trademark use and would not therefore constitute or be thought to constitute trademark infringement.

Reinhard Schanda and Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna