Abstract
A trademark consisting of just a few letters or numbers can be registered, but this does not necessarily guarantee broad protection against every similar sign. The order of the Court of Naples dated 3 July 2024, comparing F09 and FR09, shows how important the distinctive strength of the trademark, the differences perceived by the public and any prior use of the competing sign can be.
When is a trademark consisting of letters and numbers considered weak?
In commercial practice, businesses often choose a short sign because it is considered easier to remember. Acronyms, initials and alphanumeric combinations certainly offer a communication advantage: they are concise and can quickly become recognisable.
From a legal perspective, however, when a trademark is made up of only a few elements, or of very short elements, protection may become more complex, especially if a competitor uses a partially similar combination.
This is what happened in the case decided by the Court of Naples. The owner of the trademark F09, filed in October 2018, had initially obtained an injunction prohibiting the use of the sign FR09, which was considered infringing. On appeal, however, the party using FR09 challenged F09’s status as a strong trademark and the likelihood of confusion between the two signs, also claiming to have used FR09 before F09 was filed.
The Court upheld the appeal. It considered F09 a weak trademark, because it consisted of a simple combination of one letter and two numbers, without any particular graphic stylisation, and because no effective, consistent and intensive use had been demonstrated that could strengthen its distinctive character. In assessing the likelihood of confusion, the addition of the letter “R” in FR09 was considered sufficient, at the interim stage, to rule out evidence of infringement.
The Panel also found that prior use of FR09 had been established at least since April 2018, therefore before the application to register F09.
The decision therefore raises two distinct questions: how broad the protection of a trademark consisting of only a few elements is, and what changes when the competing sign was already being used before registration.
What are the requirements for registering a trademark?
To be registered, a trademark must satisfy certain requirements laid down by the Italian Industrial Property Code.
First of all, the sign must be capable of distinguishing the goods or services of one undertaking from those of others and must be capable of being represented in the register in such a way as to make the subject matter of the protection clear and precise. Article 7 of the Italian Industrial Property Code expressly permits the registration of letters and numerals; therefore, an acronym or alphanumeric combination may constitute a trademark.
The sign must also have distinctive character. Under Article 13 of the Italian Industrial Property Code, it cannot merely describe the product, its characteristics or other elements lacking individualising capacity. For a trademark consisting of only a few letters or numbers, this is particularly important: being registrable does not necessarily mean having strong distinctive character.
There is also the requirement of novelty, governed by Article 12 of the Italian Industrial Property Code. Before filing, it is therefore necessary to check whether earlier signs exist that could interfere with the chosen sign. In the F09/FR09 case, this issue is particularly relevant because the Court found that FR09 had been used before the application to register F09.
Finally, the trademark must comply with the requirements of lawfulness laid down by Article 14 of the Italian Industrial Property Code.
For a short sign, however, satisfying these requirements is only the first step. A trademark’s registrability and the scope of the protection that can be enforced against similar signs do not automatically coincide: the order of the Court of Naples focuses precisely on this distinction.
Can a weak trademark prevent the use of a similar trademark?
In the F09 v. FR09 case, the Panel held that the simple combination of the letter “F” and the numbers “09”, represented without any particular graphic stylisation, did not have a sufficient degree of individualisation to qualify F09 as a strong trademark.
In practical terms, the decision distinguishes between two different levels. On the one hand, a sign consisting of letters and numbers may be registrable when it is capable of distinguishing the goods of one undertaking from those of other undertakings. On the other hand, its enforceability against similar later trademarks depends on its distinctive strength which the sign possesses or manages to acquire on the market.
In the F09 case, the Court did not rule out the possibility that a short combination of a letter and numbers could receive protection as a trademark. It did, however, point out that, in addition to the absence of any particular graphic stylisation, no effective, consistent and intensive use had been proven, accompanied by market presence or advertising campaigns capable of strengthening its distinctive character. For this reason, at the interim stage, F09 was considered a weak trademark.
The weakness of the trademark has a direct impact on the assessment of likelihood of confusion. The Court refers to the principle according to which, while in the case of a strong trademark even changes that leave its distinctive core recognisable may be unlawful, in the case of a weak trademark even limited modifications or additions may be sufficient to exclude a likelihood of confusion.
In comparing F09 and FR09, the addition of the letter “R” was also assessed in light of the previous use of the trademark “Francesco Ranieri”: the letters “FR” could therefore be traced to the initials of a sign already in use. Taking all these elements into account, the Panel held that, at the interim stage, it had not been established that the use of FR09 was unlawful.
To this must be added a second relevant factor. The Court found prima facie evidence of prior use of FR09 at least since April 2018, therefore before the application to register F09 was filed in October of the same year.
This raises a practical question: if a weak trademark may receive more limited protection and must also contend with possible prior uses, is it still worth registering it?
Is it worth registering a weak trademark?
At first sight, the decision might appear to be an argument against filing short trademarks or, more generally, weak trademarks. In reality, the point is different: registration remains useful, but it does not automatically turn a sign with limited distinctive character into a strong trademark.
Registering the trademark provides a formal title, with a filing date and a scope of protection relating to the specified goods or services. Without registration, by contrast, anyone using a sign must rely to a greater extent on proof of actual use and its effective market presence.
The F09 case shows, however, that filing is not the end of the protection strategy. The Court also attached importance to the distinctive character actually acquired by the sign and to evidence of its effective, consistent and intensive use. It was precisely the lack of sufficient evidence on this point that prevented F09, at the interim stage, from being recognised as having the strength of a strong trademark.
For anyone choosing a sign with limited distinctive character, registration should therefore be accompanied by a number of practical measures:
- file the trademark after checking for any relevant earlier rights;
- use the sign consistently, continuously and prominently on packaging, the website, social media, catalogues, invoices and commercial materials, so that the public can immediately associate the trademark with the business;
- invest in communication, advertising campaigns and the recognisability of the sign;
- monitor subsequent filings in order to take action where there is a genuine risk of confusion.
In this sense, a trademark that is initially weak may acquire greater distinctive strength over time if, through use and promotion, it becomes established in the minds of the public as a sign identifying a specific undertaking.
Reviewed by: Margherita Manca
Publication date: 21 October 2026
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Gabriele Rossi
Laureato in giurisprudenza, con esperienza nella consulenza legale a imprese, enti e pubbliche amministrazioni.