Audi's TDI registration crashes out

In Audi AG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld an OHIM decision to reject the registration of TDI (an acronym for turbo diesel injection) as a Community trademark. The court confirmed a number of principles relating to marks made up of acronyms and held that the TDI mark lacked distinctiveness.

In its claim before the court, Audi acknowledged that it was possible to determine that the TDI mark was an acronym for turbo diesel injection or turbo direct injection. However, Audi argued that the average consumer would not immediately and without further reflection make this association. It claimed that the letters 'T', 'D' and 'I' have no specific meaning as initials, and that TDI itself could have two different meanings. It also stated that TDI had acquired distinctiveness through use and that there was no need to keep it available for use by Audi's competitors.

The court rejected Audi's claim and upheld the OHIM's decision to refuse registration. It noted that the grounds for preventing registration do not depend on there being a real, current and serious need for a sign to be available. Rather, the question to be answered is whether, from the point of view of the relevant public, there is a sufficiently direct and specific association between the mark and the characteristics of the goods and services for which registration is sought.

The court confirmed that where a mark is composed of a combination of letters in the form of an acronym, the mark must be examined as a whole. It was therefore irrelevant whether the various letters making up the TDI mark had a specific meaning or not. The court continued that the fact that TDI could have two different meanings was also irrelevant. Registration can be prevented if, as here, at least one of the possible meanings identifies a feature of the goods or services concerned.

Audi's claim that TDI had acquired distinctive character through use was also rejected by the court. It said that a survey, conducted in Germany, was not sufficient evidence to establish that the mark had become distinctive because TDI was descriptive for the relevant goods and services throughout the entire European Union. Audi had failed to prove that the relevant public across the European Union perceived the mark as indicating the trade origin of the goods and services concerned.

Friederike Bahr, Beiten Burkhardt Goerdeler, Munich