22.8. Letters

8.1  Single letter trade marks

Single letter trade marks without “get up” are generally not prima facie capable of distinguishing. The likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high (e.g. the letter M is commonly understood to indicate “mobile” in relation to phones and the letter E is commonly used to indicate a wide fitting in relation to shoes). One letter trade marks, unless represented in an unusual manner, generally possess limited inherent adaptation to distinguish and usually require evidence of use.

8.2  Two letter trade marks

Two letter marks without “get up” will generally be considered prima facie capable of distinguishing if there is no descriptive significance in the letters AND one or all of the following applies:

• the relevant goods or services are narrow in scope; OR
• the relevant goods or services are of a specialised nature; OR
• the combination forming the trade mark is a comparatively unusual one (e.g. one involving X, Y, Z, or U).

Two letter trade marks in common use in a specific field will usually not be prima facie capable of distinguishing. For example GT and LS are used by a number of traders in class 12 to indicate performance or luxury levels and do not serve to distinguish one trader’s goods from another’s.

Two letter trade marks with dictionary meanings should be examined on the basis of their definition. If they convey a descriptive meaning a ground for rejection is appropriate. If they do not convey a descriptive meaning then they are capable of distinguishing. Words such as “UP”, “NO” or “HE” would fall in this category, whether in upper or lower case. This is based on the UK practice as outlined in I.Q. trade mark [1993] RPC 379 at 381. However, the inclusion of punctuation could alter the identity of the word. “U.P.” would most likely be seen as letters rather than a word and therefore examined on that basis.

8.3  Three or more letter trade marks

Trade marks consisting of three or more letters are prima facie capable of distinguishing because there is likely to be less need for use of these combinations.  However, they will lack inherent adaptation to distinguish if they are well known acronyms or abbreviations used on or in relation to the goods and/or services concerned.

8.4  Monograms

Where a monogram is a combination of letters entwined in such a way as to not show any sequential order it will be considered to be prima facie capable of distinguishing.

8.5 Abbreviations and acronyms

Letter trade marks, irrespective of the number of letters they contain, that are recognised abbreviations for words which are not capable of distinguishing are themselves not prima facie capable of distinguishing. For example:

• "OJ" (Orange Juice) is not inherently adapted to distinguish soft drinks.
• "BYO" (Bring Your Own) is not inherently adapted to distinguish restaurant services.
• "ROM" (Read Only Memory) is not inherently adapted to distinguish certain goods in class 9.  

Other letter combinations could attract grounds for rejection because they are often used as an indication of quality e.g. "AAA".

8.5.1  Acronym/Abbreviation combination trade marks

A trade mark comprising an acronym and other material which serves only to emphasise the acronym or does not diminish the impact of the acronym, is generally considered to have a low level of inherent adaptation to distinguish. This is because the inclusion of a potentially registrable element on its own does not render the trade mark as a whole prima facie capable of distinguishing (see Lawrence J comments in Diamond T at 380).

A trade mark comprising an acronym and plain words would be considered in the same manner.  However a trade mark must be considered in its entirety and if a trade mark containing an acronym also contains other material of a significant nature, the combination could be prima facie capable of distinguishing. Therefore, the positioning of the acronym and whether it reinforces the descriptive or direct reference contained within the trade mark, may affect whether a section 41 ground for rejection is appropriate.

For example, an application for:

• OJ ORANGE JUICE would not be inherently adapted to distinguish beverages as OJ is a known abbreviation of Orange Juice.
• CERTIFIED PRACTICING RISK EVALUATION AUDITOR (CPREA) may not be prima facie capable of distinguishing risk evaluation services as the acronym does no more than abbreviate the descriptive words.  Regardless of whether the acronym is known in the relevant trade, if the size or placement does not add to the distinctive character of the trade mark as a whole, the addition of the acronym does not render the trade mark capable of distinguishing.​​​
• Example shown below would be inherently adapted to distinguish risk evaluation services as the size and placement of the acronym renders the trade mark, as a whole, capable of distinguishing.

8.6  Words the phonetic equivalent of letters