Acceptable variants of acronym mark considered

United Kingdom
In Transport for London (BL O-126-10, April 23 2010), the hearing officer has found that use of 'tfl' in the domain name form ('tfl.gov.uk') and as a web address ('www.tfl.gov.uk') were not acceptable variants of the TFL mark, as the domain name context altered the mark's distinctive character. However, Transport for London's use of 'TfL' was an acceptable variant of the mark as registered: the fact that the letter 'F" was in lower case did not alter the mark's distinctive character.   
 
Transport for London opposed Jason Wright's application for the registration of the letters 'tfl' in relation to "operating search engines" and "domain name management services". Transport for London sought to rely on its registration for TFL for "computer software to enable the searching of data" and "installation and maintenance of services relating to telecommunications, computer systems”. Proof of use of the TFL mark was requested. The evidence filed showed use in the form of 'tfl.gov.uk' and 'www.tfl.gov.uk', as well as 'TfL' in various forms of advertising.

According to the Trademarks (Proof of Use etc) Regulations 2004, the registrar shall not refuse to register a mark under Section 5(2)(a) of the Trademarks Act 1994 by reason of an earlier mark, unless the earlier mark has been put to genuine use during the five years ending with the date of publication of the application. For these purposes, use of a trademark includes use in a form differing in elements which do not alter the distinctive character of the mark as registered.

EU case law provided guidance on what constitutes genuine use:
  • genuine use means actual use of the mark by the proprietor;
  • the use must be more than merely "token";
  • the use must be consistent with the essential function of a trademark (ie, to guarantee origin);
  • the use must be by way of real commercial exploitation (eg, internal use or use in relation to promotional items does not constitute real commercial exploitation);
  • all the relevant facts and circumstances surrounding use in the market must be considered; and
  • there is no de minimis rule: even minimal use in the right context can constitute genuine use.
Guided by EU case law, which established that use of a domain name does not equal genuine use of a trademark which forms part of that domain name (see Telefonica Moviles SA v Orbseal LLC (Case R-710/2002-2)), the hearing officer decided that the other elements (ie, 'www' and '.gov.uk') showed that the distinctive character of the mark TFL as registered had been altered. The hearing officer held as follows:
 
"If an applicant opts to register his mark as a random three letter mark solus, then he does not thereby acquire 'protection' or be able to rely upon use in the context of a domain name. Such use is not in my view 'acceptable variant' use, but rather placing the mark as registered in an instantly recognizable, but different context altogether, from the randomly chosen letters, namely that of a domain name."    
 
However, 'TfL' was an "acceptable variant" of the TFL registration, as the average consumer would be likely to assume that the three random letters were an acronym or abbreviation of something else. The letter 'F' in lower case did not alter the distinctive character of the mark, as the letters were the same and in the same order.

Transport for London had proved that its use of 'TfL' was genuine use (ie, for the purpose of real commercial exploitation in the relevant markets) in its dealings with consumers in connection with its public transport operation, but did not support use for search engine software and computer services. 

The opposition thus failed on all grounds.
 
Cheng Tan, McDermott Will & Emery UK LLP, London

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