Trademarks Consisting of a Single Letter Cannot be Monopolized

On October 18, 2022, Division I of the Federal Court of Appeals in Civil and Commercial Matters in re: “Martínez Hermanos y Compañía S.R.L. v. Mars Incorporated” upheld the first instance decision dismissing the oppositions filed by Mars Incorporated on the basis of its trademarks “m (design)” against the trademark applications “M (design)”, filed by Martinez Hermanos.
 

The court held that the fact that the trademarks in conflict share the same and only letter does not imply per se likelihood of confusion, since the letter “M” is commonly used throughout class 30.

According to the report issued by the Trademark Office, there are several trademarks with the letter “M” registered and filed in class 30. Therefore, whoever seeks registration of the letter “M” as a trademark knows that it is weak and that they must tolerate its coexistence with other marks bearing some differences. In this sense, although the use of a common-use mark cannot be monopolized, this does not determine that it cannot be registered.

The court considered that Martinez Hermanos’ trademark applications consist of the letter M in capital letters referring to the "M" of the famous coffee chain "Café Martínez", while the opponent’s trademarks are all lowercase “m”. This feature clearly distinguishes them from the Martinez’s ones.

Consequently, the court understood that the marks have enough distinctive elements, which removes the likelihood of confusion among consumers.

Also, the court considered that defendant’s trademark is well-known. A trademark is "well-known" if the mark is known by the majority of average consumers. This makes it even more difficult for consumers to be misled by the products marketed by both parties.

Finally, the court stated that the fact that Mars’ trademark is well-known –in which case the comparison should be more rigorous to avoid taking advantage of its reputation– further distinguishes the marks in conflict.