An intriguing little case (little being the operative word – the reasoning takes up a mere two paragraphs) case from the OHIM Second Board of Appeal.

Level 3 filed an application to register a figurative mark consisting of the number three in parentheses (3) as a CTM for various communication services in Class 38. The examiner refused the application, stating that the mark lacked distinctiveness and that numbers in parentheses are commonly used to refer to ordinals. As such, they belonged in the public domain. Level 3 appealed.

This about sums up the IPKat's thoughts...

The Board annulled the examiner’s decision and remitted the case to the examiner for further prosecution:

In principle, a single numeral by itself is not inherently distinctive as a trade mark. The same though was not necessarily true of a number enclosed in ordinary round brackets.
There was logic to the examiner’s argument that the number three in brackets would be seen as an ordinal e.g. as referring to the third item in a series. However, there was perhaps even greater logic in Level 3’s argument that a number enclosed in brackets without matter outside the brackets would not be seen as an ordinal. A number in brackets without anything before or after it has no obvious propensity to convey information about the position of an item in a list. This suggested that the sign applied for might have the capacity to act as a trade mark.

Ultimately the decision as to whether to refuse the application on absolute grounds depended on the effect that registration of the trade mark applied for would have on the rights of other traders. In this case, the availability of numbers in brackets for the purpose of indicating the position of an item on a list would not be restricted in any way because such use would not amount to trade mark use and therefore would not constitute, or be thought to constitute, a trade mark infringement

The IPKat says that this may be a small case, but it packs a mighty punch. The Board has used the scope of trade mark infringement in its determination of registrability, despite clear indications from the ECJ (see for example Linde) that infringement is not relevant to this assessment. Despite the ECJ’s contrary position in Arsenal v Reed, the Board seems to have assumed that trade mark use is a necessary ingredient of infringement. Finally, the Board has considered the need to keep certain marks free for others to use in assessing distinctive character, rather than in its usual role in assessing descriptiveness.

Proper use of parentheses here
Everything you never wanted to know about ordinals here
Musical brackets here
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