Patent and Registration Office refusal of one-letter mark held to be invalid

The Court of Patent Appeals has ruled that the Patent and Registration Office must re-examine an application for a single-letter mark.

In its judicial review (Case 12-035) of the office's decision, the Court of Patent Appeals stated that a single-letter mark may be registered in certain circumstances. Consequently, the court declared that the office's decision was invalid and that the latter must re-examine the application.

The applicant, Diligentia AB, sought to register the letter 'D' in cursive handwriting as a trademark, but the Patent and Registration Office rejected the application in its entirety. The office motivated its decision by declaring that:

• usually, a single letter cannot achieve a sufficient level of distinctiveness; and
• the trademark's design could not be considered to achieve uniqueness based on its own inherent distinctiveness.

In its decision, the court pointed out that, according to EU case law (see BORCO-Marken-Import Matthiesen (Case C-265/09 P)), applications shall be judged based on the trademark's distinctiveness in relation to the goods and services that are covered by the application. Consequently, it was not legitimate to state that the letter 'D' could not be registered as a trademark based on the general rule that single letters cannot be registered as trademarks.

The court further stated that, in cases involving a single-letter trademark or a similar mark, the crucial issues are:

• whether the letter is descriptive of the goods and services that the trademark designates; and
• if not, whether the trademark is meant to be considered as a characteristic of the goods and services.

Because the Patent and Registration Office never considered these issues, the court decided to send the application back to it for re-examination.

This judgment confirms the direct effect that EU case law has on the interpretation of national law. Further, it lays down guidelines for both the authorities and the market regarding which decisions should be made, and what it takes to reach a sufficient level of distinctiveness, in cases where the trademark consists only of a single letter or of a few letters.

Tom Kronhöffer and Martin Ahlbeck, von lode advokat ab, Stockholm