Numbers cannot be registered as trade marks if they are descriptive

Article date: 16.05.11

* Businesses using numbers as trade marks – to distinguish their goods or services from those of other traders – cannot register them if they are descriptive, the European Court of Justice (ECJ) has decided.

A publisher of a puzzle book containing 1,000 puzzles has been denied registration of “1000” as a Community Trade Mark (CTM) because it is merely descriptive of the puzzle book, and therefore not distinctive enough. A CTM protects a trade mark from being copied or otherwise infringed by another trader throughout every member state in the European Union by making just one registration (and paying just one fee) at the central CTM registry in Alicante in Spain.

Being ‘merely descriptive’ of the relevant products or services is one of the grounds upon which registration as a CTM can be refused. A mark is descriptive if (among other criteria) it is made up only of words or signs that describe the quality or quantity of the relevant goods or services. The CTM criteria in this respect are virtually identical to those for registration of a UK trade mark.

The ECJ ruled that a number would be refused registration if it was reasonable to believe that, in the minds of potential customers, the number characterised the relevant goods or services – in practice, that they would read '1000' as indicating that there were 1000 puzzles in it – and that, in this case, it was reasonable to believe that. So where the content or nature of goods or services is easily denoted by a number then the number alone is likely to be merely descriptive as a trade mark, and therefore not registrable.

Recommendation
Businesses using, or planning to use, numbers as trade marks to distinguish their goods or services form others should consider whether they are merely descriptive, and therefore not registrable, before investing in them and developing goodwill and reputation in the relevant marketplace.

Case ref: Agencja Wydawnicza Technopol v OHIM Case C-51/10 OJ C 113 of 01.05.2010

* This is not legal advice; it is intended to provide information of general interest about current legal issues.