Combination of Numbers1
Unsuitable TM Discrimination
Changes have been taking place recently in the TM Office where authorities therein have adopted a stricter criterion at the moment of evaluating registrability of applied signs. This attitude causes relevant number of observations based on the arts. 2 and 3 of TM Law, which establish the prohibitions of registration, focusing on the characteristics that are proper of the applied signs and the confusability with those that have been already filed and/or registered.
We could call the interpretation of art. 1, by the Authorities, as unsuitable, and somewhat erroneous, as also considered in general by IP agents, since said authorities interpret the contents of art. 1, in the sense that combinations of numbers, that is, the numbers of more than 1 digit cannot be registrable unless they claim a particular design.
Art. 1 of effective TM Law in Argentina (No. 22362) provides the definition of TRADEMARK, mentioning as essential requisite for being accepted as such, the distinctive capacity and this article enumerates those examples that could fall in such category:
- pattern / printings
- Combination of colors applied to a determined place / space in a product or packaging
- Combination of letters and numbers
- Letters and number by special drawing
- Advertising phrases
- relief with distinctive capacity
and in the end, it´s mentioned: and every other sign with such capacity, leaving thus an open door to incorporate others, such as sound and smell marks, in the way they can be reproduced precisely, that is, that the aim is the registrability.
Art. 2 lists examples of what is not considered a mark and consequently, what cannot be registered as such.
From said list, there is no contradiction with the contents in the art. 1. It is only stated that the nature of the products or a single color applied on them cannot be registered.
In the first article, numbers and letters are in the same group, which are considered registrable if they claim a special drawing / design granting a particular characteristic thereto, and on the other hand, the combination of letters and of numbers are categorized as registrable also.
Following this scheme, hundreds of Tms formed only by combination of numbers, or various letters without any meaning or combination of letters and numbers or words and numbers, have been registered.
Some examples are as follows:
- “1002” in class 1
- “4711” in class 3
- “555” class 29
- “504” class 12
- “1.2.3” class 25
- “F-100” class 12
- “101” class 14
- “187” class 32
- “120” class 33
- “Peugeot 407” class 12
- “678” classes 38 and 41
- “Radio 10” various classes
- “bgh” various classes
- “g-450” class 23
In light of the above, the recently adopted criterion goes against an old decision from the Supreme Court where it was estimated that the special drawing is necessary only for the ten first fundamental numbers, but not for combination of numbers.
There are combinations of numbers registered that remit to a meaning, i.e
- “1816” evokes the year in which the Argentine Republic’s Independence was declared
- “1492” remits the year when America was discovered
- “1789” the year of the French Revolution
- “666” synonym of anti-Christ
For example, in Argentina, when saying “I bought a 206” it is meant that what was bought is the Peugeot 206 vehicle, so such combination of numbers has a distinctive capacity.
In the same sense, the expression “I own a 600 of year 70” it means that what is owned is the Fiat 600 vehicle.
In our opinion, the restrictive attitude adopted by the TM Office is contrary to the Spirit of the Law, consequently, the decision of providing a design to a TM claiming a combination of numbers, will as from the applicant’s point of view, yet not a requisite to obtain registration of such TM.
The difference between adding such design or not, will influence the time frame and cost that could demand the registration proceeding , since, if no design is added, it would be possible to meet office actions, which will mean time and costs in challenging them.
1 Author: Dra. Maria Elena Perez, Head of Moeller’s Legal Affairs Department.