IBM e-business logo mark registration allowed

Sweden

The Swedish Patent Appeals Court has overturned a Patent and Registration Office (PRO) decision and has allowed the registration of IBM Corporation's e-business logo mark, which consists of the symbol '@' but with the letter 'a' replaced by an 'e' (Case 02-087/02-088).

IBM applied to register its e-business logo for, among other things, services in Classes 35 and 36 of the Nice Classification. In November 2001 the PRO refused registration pursuant to Section 13 of the Swedish Trademarks Act. The PRO stated that the logo mark lacked inherent or acquired distinctiveness. It noted that the proposed registration was very similar to the '@' symbol, which is associated with a wide range of IT services. The PRO also stated that the curling elephant's trunk shape, which when added to the letter 'a' makes up the '@' symbol, was a well-known graphical sign and belonged in the public domain.

IBM appealed pointing to, among other things, its existing Swedish registration of the e-business logo mark for goods and services relating to computers. It also argued that the logo mark (i) was an invented design, and (ii) should be assessed as a letter that together with a well-known graphical symbol formed a new and distinctive trademark.

The Patent Appeals Court made reference to prior case law in which it held that, where possible, applicants should be precluded from registering single letters or numbers as trademarks as this may give them an unfair competitive advantage. It also remarked that the letter 'e' is a common and widely used abbreviation for 'electronic'. The letter 'e' is thus not by itself distinctive. The court further noted that the trunk shape conveyed an association with the '@' symbol, which is used in email addresses and thus denotes a connection with services provided over the Internet. However, in spite of these findings, the court ruled that IBM's e-business logo mark was distinctive and was not descriptive of e-commerce services or any other type of service. Accordingly, it overturned the PRO's decision and allowed registration.

Fredrik Engfeldt, Jonas Gulliksson Advocates Ltd, Malmo

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