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Are initial letters a good trade mark?

It is quite common today for businesses to abbreviate their name to its initial letters.  However, from a trade marks perspective, if a registered trade mark comprises of only a few letters, especially if they cannot be spoken as a word, legal protection may be quite narrow.

KFC v Grill’d

This happened recently to the KFC company (KFC Co), who opposed a trade mark application for HFC by rival restaurant business Grill’d (KFC v Grill’d).  HFC meant Healthy Fried Chicken.  KFC is an abbreviation of Kentucky Fried Chicken.

Not sufficiently similar

The Trade Marks Office Hearing Officer held that that HFC was not sufficiently similar to KFC.  Each letter of the two marks was pronounced separately and so consumers were more likely to recall them. The concept behind the two was different – Kentucky vs Healthy. 

Reputation

The KFC mark was adopted in 1991 and enjoys a substantial reputation in Australia.  KFC Co argued that because of its reputation in KFC, use of HFC would be likely to cause confusion.  However, this substantial reputation actually worked against KFC Co because it meant that consumers were less likely to confuse KFC and HFC.

Bad faith

KFC Co also argued that Grill’d had adopted its mark in “bad faith” and relied on Grill’d’s use of other well known elements of KFC Co branding – such as red and white stripes and using the phrase “finger lickin’ better”.  Grill’d defended this on the basis that this was comparative advertising – “a cheeky, parodic comparison” between the KFC Co’s fried chicken and Grill’d’s healthier alternative.  The Hearing Officer held that this was not “bad faith”, Grill’d’s HFC mark did not contain any KFC branding and, anyway, this use post dated the filing date of Grill’d’s trade mark application.

Thus KFC Co failed in its attempt to prevent Grill’d from registering HFC.  It is not yet known whether KFC Co will appeal.  But the case illustrates the risk that a three letter trade mark may only provide protection against an exact copy.

I can advise on the registrability of trade marks and file and prosecute trade mark applications.

 

This blog provides general information only, and is not intended as legal advice specific to your circumstances.  Please seek the advice of a legal professional if you have any particular questions.

Liability limited by a scheme approved under Professional Standards Legislation

© Margaret Ryan, Melbourne, Australia, 2023

Are initial letters a good trade mark?