Most trademarks consist of a word or a logo, but acronyms are also popular as trademarks. This article considers which acronyms can be registered and the benefits offered by registration.
Types of acronym
Some acronyms can be pronounced as words, such as HEMA (Hollandsche Eenheidsprijzen Maatschappij Amsterdam) or DE SPAR (Door Eendrachtig Samenwerken Profiteren Allen Regelmatig). In the case of DE SPAR, the acronym has now been abbreviated to SPAR. Although the full names describe the companies' activities precisely, the acronyms – the first letters of each word – are strong trademarks because they make no reference to the product or service.
Other acronyms are not pronounced as words, but rather the letters are articulated separately – for example, KLM (Koninklijke Luchtvaart Maatschappij) or ING (Internationale Nederlanden Groep). As long as the acronym itself makes no reference to the company’s products or services, it is suitable as a trademark. Thus, ING cannot be registered for engineering services, but can be used for banking services.
The public is often unfamiliar with an acronym, but it can be accepted by those for whom the trademark is intended. Therefore, before determining whether an acronym is suitable as a trademark, it is important to know what the acronym stands for, and particularly whether this is its usual meaning in the relevant sector. For example, although AAC might seem to be a distinctive acronym, if everyone in the sector uses it to mean advanced audio coding, it cannot be registered as a trademark for activities in that sector.
Scope of protection
If a name is registered as a trademark, the rights holder can launch proceedings against the use of signs which are identical or very similar. In such cases, similarities in the appearance, sound or meaning are examined. If two acronyms are identical and intended for the same activity, it is usually possible to take legal action. However, if the acronyms differ by just one letter, the overall impression will determine whether action is possible. Are NKS and NKT similar because only one letter is different? The first two letters are the same but the S and the T look and sound very different. So on balance, they are not similar. In contract, NKS and MKS are very similar to each other because they differ by only one letter and those two letters sound very similar. Thus, in 2008 the owner of the MKS trademark brought a successful legal action against the owner of the NKS trademark. One letter can therefore make a world of difference.
The scope of protection of an acronym is therefore not always the same, particularly if the acronym is not yet widely known among the public. It is therefore vital to protect the acronym well. Case law shows that acronyms enjoy the best protection if they are registered as a word trademark, without other words or visual elements.
Milca Graver-de Looper
This article first appeared in IAM. For further information please visit www.iam-media.com.