CANCELLATION No 13 048 C (INVALIDITY)

New York Mercantile Exchange, Inc., World Financial Center, One North End Avenue, new York 10282, United States of America (applicant), represented by STOBBS, Endurance house, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Intercontinental Exchange Holdings, Inc, 5660 New Northside Drive, 3^rd Floor, Atlanta, Georgia 30328 United States of America (EUTM proprietor), represented by V. Vezold & Partner, Akademiestr. 7, 80799 Munich (Germany) (professional representative).

On 29/03/2017, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 14 284 814 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 14 284 814 BRENT (word) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Electronic publications, namely, newsletters, journals, bulletins, fact sheets, reports, summaries, guidelines, manuals, compilations, brochures, workbooks, and worksheets featuring financial news and financial information, including commentary, articles, charts, lists, diagrams, images, tables, editorials, calculations, prices, historic data, and financial data; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, calculating, collecting, compiling, analysing, estimating, evaluating, and reporting price indices and related information for use in transactions involving financial instruments; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, providing information in the field of financial transaction settlement rates, financial margin rates of financial instruments and currency exchange rates; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, operating a commodities and commodity derivatives exchange, providing financial exchange services for transactions involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, financial clearing and clearing house services, namely, clearing financial transactions involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, financial investment and advisory services, monitoring of global financial markets for others, also known as, global investment research services; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, disseminating real-time and historic financial news, data and information for the purchasing, selling, administering, managing, monitoring, settling, clearing, pricing of global financial markets, currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, disseminating real-time and historic financial news, data and information for the valuing and tracking of global financial markets, currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; and interactive computer software and computer hardware for providing financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices, namely, financial research and analysis services, brokerage services involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds and financial planning services.

Class 36: Financial services, namely, calculating, collecting, compiling, analyzing, estimating, evaluating, and reporting financial price indices and related information for use in transactions involving financial instruments; providing information in the field of financial transaction settlement rates, financial margin rates of financial instruments and currency exchange rates; operating a commodities and commodity derivatives exchange; providing financial exchange services for transactions involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; financial clearing and clearing house services, namely, clearing financial transactions involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; financial investment and advisory services; monitoring of global financial markets for others, also known as, global investment research services; disseminating real-time and historic financial news, data and information for the purchasing, selling, administering, managing, monitoring, settling, clearing, pricing, valuing and tracking of global financial markets, currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; financial research and analysis services; brokerage services involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; financial planning; and providing all of the aforesaid services on-line from a global computer network, the internet and interactive electronic media in the nature of computer terminals and mobile communication devices.

Class 42: Hosting an interactive website that gives multiple computer users simultaneous access to financial news, data and information; and computer programming, research and design of interactive computer software and computer hardware for providing financial services, namely, calculating, collecting, compiling, analyzing, estimating, evaluating, and reporting price indices and related information for use in transactions involving financial instruments; and computer programming, research and design of interactive computer software and computer hardware for providing financial services, namely, providing information in the field of financial transaction settlement rates, financial margin rates of financial instruments and currency exchange rates; and computer programming, research and design of interactive computer software and computer hardware for providing financial services, namely, operating a commodities and commodity derivatives exchange, providing financial exchange services for transactions involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; and computer programming, research and design of interactive computer software and computer hardware for providing financial services, namely, financial clearing and clearing house services, namely, clearing financial transactions involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds, financial investment and advisory services, monitoring of global financial markets for others, also known as, global investment research services; and computer programming, research and design of interactive computer software and computer hardware for providing financial services, namely, disseminating real-time and historic financial news, data and information for the purchasing, selling, administering, managing, monitoring, settling, clearing, pricing, valuing and tracking of global financial markets, currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds; and computer programming, research and design of interactive computer software and computer hardware for providing financial services, namely, financial research and analysis services, brokerage services involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds and financial planning services.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article  7(1)(b), (c) and (d) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that in view of the history and meaning of the term ‘BRENT’ (supported by Exhibits 1 to 4), the EUTM was registered contrary to the provisions of Article 7(1)(b), (c) and (d) EUTMR. According to the applicant, the relevant public consists of professionals in the financial services industry: all the goods and services protected by the EUTM are confined to this sector.

In particular, the applicant considers that the term ‘BRENT’ has been used in the last few decades in the financial services field to refer to a type of crude oil that is light and sweet and drilled in the North Sea. The term is also used as an international benchmark for the price of crude oils (Exhibits 5 to 9) and, as such, constantly quoted in various articles (Exhibits 10 to 30). Moreover, Brent crude oil prices have been recorded in the UK and Europe since 1976 and 1987 respectively and Brent crude oil futures can also be trades on the Prague Stock Exchange (Exhibits 31 to 33). As a result of the foregoing, the EUTM consists exclusively of a sign which is customary in the current language or in the bona fide and established practices of the financial services industry.

Moreover, the applicant claims the EUTM is a term which consists exclusively of descriptive matter. It would be contrary to the aim of Article 7(1)(c) EUTMR to maintain the registration of this term as the EUTM proprietor would monopolise the use of a descriptive term in detriment of other undertakings. According to the applicant, the mark conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question. For example, it directly describes the subject matter of some goods in Class 9. It is also evidently descriptive for the services in Class 36 and it is descriptive as to the nature and subject matter of the services in Class 42. This is especially so in view of the fact that the services are confined to financial services industry.

Finally, the applicant contends that the EUTM is devoid of any distinctive character. To the extent that the term ‘BRENT’ is customary in the trade and descriptive with regard to the goods and services covered by the registration, it is evident that it is also devoid of any distinctive character. The applicant insists that there are numerous third parties that use the term ‘brent’ to describe a type of crude oil and/or to refer to it as a benchmark for crude oil prices. As such, the word cannot act as an indicator of origin in the EU, especially within the financial services industry.

In support of its observations, the applicant filed the following evidence:

• Exhibits 1 to 4: history and meaning of the term BRENT and ‘Brent blend’ according to various articles printed on 01/06/2016: ‘UK Brent oil’ in www.onefinancialmarkets.com; ‘The Brent Story’ from www.shell.co.uk; ‘The Brent Group-Uppermost Lower Jurassic to Middle Jurassic’ from www.npd.no; and ‘Brent Oil – How to invest in Brent Oil’ from commodityhq.com;

• Exhibits 5 to 9: definitions of ‘BRENT BLEND’ (www.investopedia.com), ‘BRENT CRUDE OIL’, (www.financialAdvisoryDefinition.com, www.yourdictionary.com), ‘NORTH SEA BRENT CRUDE’ (www.investopedia.com), ‘BRENT CRUDE’ (uk.finance.yahoo.com) printed on 01/06/2016;

• Exhibits 10 to 30: examples of articles quoting ‘BRENT’ as a benchmark for crude oil prices: ‘Chart of the Day- Crude Oil Contango to Backwardation, USO’ at www.riskreversal.com (05/08/2016), ‘Brent Crude’ at www.wikinvest.com, ‘Declining Spreads Are a big concern for oil and rail companies’ from www.fool.com (30/06/2013), ‘European Energy Trading market indicators’ from www.prospex.co.uk (October 2013), ‘Benchmark oils’ from petroleum.co.uk, ‘Understanding Benchmark Oils: Brent Blend, WTI and Dubai’ from www.investopedia.com including a chart comparing the historic closeness between WTI and Brent from 1957 to 2011, ‘What is Brent Crude’ from marketbusinessnews.com, ‘Why crude oil is poised to surge to over $100/Barrel’ from www.businessinsider.com (8/12/2011), ‘Oil spikes on Iran fears’ from money.CNN.com (15/02/2012), ‘Why high oil prices are now affecting Europe more than the US’ from ourfiniteworld.com (05/03/2012), ‘Crude oil prices edge further above $99 a barrel - Brent crude inches up’ from newurope.eu (26/12/2013), ‘Norway Leads Western Europe in Oil Reserves’ from The Maritime Executive (30/04/2014), ‘Brent crude oil drops to lowest since June 2013 as supply risks ease’ from The Economic Times (18/08/2014), ‘Irak backs down on Opec sending Brent oil price tumbling’ from The Telegraph (08/10/2014), ‘Brent crude hits four-year low after slowdown in Chinese industry’ from The Guardian (13/11/2014), ‘One chart shows how the oil slump could plunge Europe in deflation’ from Business Insider UK (09/12/2014), ‘Brent oil price falls below $59 a barrel’ from BBC (16/12/2014), ‘Brent crude oil tumbled below $50 for the first time since 2009’ from Business Insider UK (07/01/2015), ‘WTI crude oil surpasses Brent for first time since 2013’ from www.bloomberg.com (13/01/2015), ‘WTI crude oil surpasses Brent for the first time since July 2013’ from www.livemint.com (13/01/2015) and ‘The vanishing WTI/Brent Spread’ from www.oilprice.com (14/01/2015). The undated articles were printed on 15/04/2016;

• Exhibits 31 to 33: indications of average Europe Brent Spot Price FOB from May 1987 to April 2016 Europe from US Energy Information Administration (www.eia.gov), indications of UK Brent crude oil price annually 1976-2016 (www.statistics.com) and information of 15/04/2016 of Brent crude oil futures traded in Prague Stock Exchange.

The EUTM proprietor argues that the applicant has not been able to prove that the contested EUTM has been registered in violation of Article 7(1)(b), (c) and (d) EUTMR. It additionally argues that the EUTM has become distinctive according to Article 7(3) EUTMR at least in relation to services in Class 36.

The EUTM proprietor accepts that ‘BRENT’ is a type of sweet crude oil that can be used as a benchmark for the prices of other crude oils. However, it considers that the term itself only describes a certain blend (consequently, only descriptive for goods in Class 4) but it does not immediately inform consumers without further reflection that the goods and services covered by the registration relate to crude oil extracted from the North Sea region.

In particular, as regards the services in Class 36, the EUTM proprietor indicates that many of them have no connection to crude oil at all so there is not a link close enough between ‘BRENT’ and the services. As regards the services in Class 36 close to pricing in connection to ‘Brent products’, the EUTM proprietor considers that Article 7(1) EUTMR is not applicable as it is the sole provided in the world and therefore also in the EU of crude oil pricing and indices under the name ‘BRENT’. According to the EUTM proprietor, this is confirmed by some of the Exhibits submitted by the applicant. The EUTM proprietor submits evidence to show that it is itself the source of the Brent pricing information (Exhibits A to M containing contract specifications, press articles, publications and screenshots of pricing information on specialised websites). As a result, consumers engaging in financial services or financial experts will reasonably associate the mark ’BRENT’ with the EUTM proprietor. According to the EUTM proprietor, the recognition of ‘BRENT’ as a benchmark for crude oil is evidence of the notoriety of the mark and the success of the EUTM proprietor services, when coupled with the widespread acknowledgement that the EUTM proprietor is the source of the same price information. It submits a further article in this regard (Exhibit N).

Regarding the goods in Class 9, the EUTM proprietor argues that the applicant fails to adduce convincing arguments regarding the alleged lack of distinctiveness of the EUTM. The EUTM proprietor considers that it is unrealistic to connect computer software and hardware with the term ‘BRENT’.

In relation to services in Class 42, it contends the applicant’s argument that these services are confined to the financial service industry. According to the EUTM proprietor, these services are typically provided by specialized software developers and not by financial experts. Consequently, the public will not establish any link between ‘BRENT’ and the services.

In support of its observations, the EUTM proprietor filed the following evidence:

• Exhibit A: two contract specifications published by CME Group for products traded under the BRENT Name. Printout of 12/08/206;

• Exhibit B: Wall Street Journal article, 28/01/2011, The Gaping Gap Between the Price of Nymex and Brent. Which is Right?;

• Exhibit C: MarketWatch article, 01/07/2011 ‘ICE Gaining fast on CME in oil futures volume war’;

• Exhibit D: Investopedia article, 24/12/2015 Understanding Benchmark Oils: Brent Blend, WTI and Dubai;

• Exhibit E: Financial News, 10/07/2006, ‘Nymex to rival ICE with Brent futures on Globex’;

• Exhibit F: third party brokers web page ‘cannontrading’, ‘Brent Crude Oil Futures Trading’ (printout of 12/08/206);

• Exhibit G: screen shots of pricing information for ‘Brent Oil Futures - Oct 16’ from investing.com. Reference to Crude Oil Brent October 2016 (ICE);

• Exhibit H: screen shots of pricing information for ‘Crude Oil Brent’, from Nasdaq (illegible date). Reference to Crude Oil Brent (ICE);

• Exhibit I: screen shots of pricing information for ‘ICE Brent Crude Oil Futures Price’, from wtrg.com (referring to 12/08/2016);

• Exhibit J: screen shots of pricing information for ‘Ice Brent Crude Oil’, from markets.ft.com (illegible date);

• Exhibit K: screen shots of pricing information for ‘ICE Brent Crude Oil Futures (B)’, from quandl.com (12/08/2016);

• Exhibit L: screen shots of pricing information for ‘Brent Oil Oct 2016’ from quotes.wsj.com (illegible date). Reference to ‘Brent Crude (ICE)’;

• Exhibit M: screen shots of pricing information for ‘Energy’ from Bloomberg.com;

• Exhibit N: Business week article, ‘Analysis: Brent gains ground in oil benchmark battle’. Undated. However, according to the EUTM proprietor, the article is dated 08/04/2011.

In view of the lack of further observations, on 08/12/2016, the Office decided to close the adversarial part of the procedure.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which was the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Considerations common to all the grounds invoked, namely Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (d) EUTMR

The EUTM was applied for on 23/06/2015 and registered on 22/10/2015. It consists of the word mark ‘BRENT’ in connection with the goods and services listed above

Relevant public

The Cancellation Division concurs with the applicant that the goods and services are aimed at professionals in the financial sector. The EUTM proprietor does not dispute these findings. In view of the nature of the goods and services in question, the awareness of the relevant public will be high.

According to the supporting documents provided by the parties, the term ‘BRENT’ seems to be used world-wide in the financial sector. Therefore, professionals in the financial sector through the European Union will be familiar with this term, irrespective of their mother tongue.

Relevant point in time

The relevant point in time in respect of which the assessment of the claimed descriptive character, lack of distinctiveness or customary character of the sign ‘BRENT’ must be made is the date of application of the trade mark. In other words, it is necessary to establish whether or not the word ‘BRENT’ was seen as a term describing the goods and services at the time of its filing (i.e. 23/06/2015).

Definition of ‘BRENT’

The applicant indicates that ‘BRENT’ originates from the moniker given to an oil field by Shell UK Exploration in the North Sea region on behalf of Exxon Mobil and Royal Dutch Shell (applicant’s Exhibit 1). It is used to refer to a light and sweet crude oil and to an international benchmark for crude oil prices. The EUTM proprietor agrees with this definition. Indeed, according to the numerous supporting documents, the term ‘BRENT’ designates both a light and sweet crude oil from the North Sea but also, it is used as a benchmark for the prices of other crude oils. Brent, together with WTI (West Texas Intermediate) and Dubai/Oman are the main benchmarks for oil prices. Benchmarks are used as an easy way to value this commodity based on the quality of its location. In particular, Brent refers to oil from four different fields in the North Sea: Brent, Forties, Oseberg and Ekofisk. It is used to set prices for two thirds of the world’s oil (EUTM proprietor’s Exhibit D which is identical to applicant’s Exhibit 15). Brent is also referred to as the European benchmark (applicant’s Exhibit 10).

It turns out that Brent crude oil is deliverable on futures contracts traded on the electronic Intercontinental Exchange (ICE) and on the New York Mercantile Exchange NYMEX (applicant’s Exhibit 6).

As a result, the term ‘BRENT’ is used by professionals in the financial sector. The documents submitted by both parties confirm this conclusion. In particular, the numerous articles in specialised journals and web pages clearly show that the term ‘BRENT’ (also in combination with ‘crude’ and/or ‘oil’) is a commonly used word in crude oil trading (for instance applicant’s Exhibits 28 to 33, EUTM proprietor’s Exhibit B and G).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested EUTM is registered (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).

In accordance with the same case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (11/04/2008, C‑344/07 P, Focus, EU:C:2008:222, § 21).

The existence of such a relationship must be assessed, firstly, in relation to the goods covered by the contested EUTM and, secondly, in relation to the perception of the relevant public (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 30).

The EUTM proprietor disputes the applicant’s claim that the term BRENT conveys obvious and direct information regarding the kind, intended purpose and/or subject matter of the goods and services in question. The EUTM proprietor considers that the term only describes a certain blend (or mix of crude oils from several facilities in the North Sea). It further argues that, save some services in Class 36, the relevant goods and services are not connected to crude oil at all so the link between the term and the services is not close enough to be considered devoid of distinctiveness.

Whilst BRENT is undoubtedly a type of crude oil (or mix of oils), as explained above, it turns out from the facts of the case and the evidence put forward by the parties that BRENT (or Brent Blend) is also associated, in the financial field, with one of the three main benchmarks for oil prices.

Moreover, the Cancellation Division agrees with the applicant that all of the contested goods and services can be linked to the financial sector and consequently to ‘BRENT’ as a benchmark in trading. In this regard, the Cancellation Division sees no reason to depart from the Fourth Board of Appeal reasoning in its decision of 02/06/2016 in case R 8/2016-4 ‘BRENT INDEX’ which related to identical goods and services.

The goods in Class 9 consist of specific electronic publications featuring financial news and financial information and interactive computer software and hardware for providing a number of financial services on-line from a global computer network and the internet via computer terminals and mobile communication devices. Clearly, the registered goods are closely linked to the financial sector. In this sense, as the applicant contends, the term ‘BRENT’ will be perceived as referring to the subject-matter of the publications (for instance, publications providing information of the BRENT benchmark) and the kind and intended purpose of the software and hardware (for instance, software and hardware required to trade, invest or advice on BRENT options or BRENT futures).

Similarly, all the services in Class 36 are specifically linked to the provision of on-line services in the financial sector. Broadly speaking, they consist of financial services connected to financial price indices, the provision of information on rates, the provision of financial exchange services, financial clearing services, financial investment and advisory services, monitoring of global financial markets for others, disseminating financial news, financial research and analysis, brokerage services and financial planning. In view of the undisputed definition of BRENT as a benchmark for the prices of other crude oils, this term conveys obvious and direct information regarding the subject-matter, kind and intended purpose of these services. For instance, the contested trade mark will be considered as a descriptive indication of the content of the financial news (news and information on BRENT oil prices and rates as a benchmark), or that the investment, clearing and brokerage services regard options or futures tied to the BRENT benchmark.

Finally, the services in Class 42 consist of website-related services given access to financial news, data and information, computer programming and research and design of computer software and hardware for providing a number of specific financial services such as providing financial information, operating in commodities, clearing services, disseminating financial news or financial research. Again, contrary to the EUTM proprietor’s arguments, these services are all connected to the financial sector. As such, the term ‘BRENT’ will be perceived as descriptive of the kind and intended purpose of the services. For instance, that the software and hardware is being designed specifically for BRENT futures trading.

The other EUTM proprietor’s arguments do not call these findings into question.

In particular, the EUTM proprietor argues that it is the source of the Brent pricing information. It claims that it is the sole provider in the world, and therefore also in the EU, of crude oil pricing and indices under the name ‘BRENT’.

Whilst it may be true that the EUTM proprietor is currently the only provider of financial products linked to ‘BRENT’ (such as options and futures), it is nonetheless a fact that the use of the term ‘BRENT’ when referring to such products is made as a reference to the crude oil benchmark that they are linked to. In other words, the term BRENT does not indicate commercial origin but describes the characteristics of the products and services. The fact that the EUTM proprietor (or its subsidiaries) is the only operator offering a product with the name ‘Brent crude contract’ is not per se an indication that the term ‘BRENT’ is not descriptive or otherwise devoid of distinctiveness. As above indicated, in the financial services arena, the reference to ‘BRENT’ in relation to financial products will be perceived as a descriptive indication of the oil prices benchmark that is being used.

Considering all the above, it is concluded that the EUTM consists exclusively of an indication that may serve, in trade, to designate a characteristic of the contested goods and services, the same situation already existed at the time of filing of the contested mark, and, therefore, the mark has been registered contrary to the provision of Article 7(1)(c) EUTMR.

Since Article 7(1) EUTMR makes it clear that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a European Union trade mark (28/06/2011, T‑487/09, ReValue, EU:T:2011:317, § 80; 17/04/2013, T‑383/10, Continental, EU:T:2013:193, § 71-72; 12/06/2013, T‑598/11, Lean Performance Index, EU:T:2013:311, § 52), it is no longer necessary to consider, in the present case, the applicant’s arguments alleging breach of Article 7(1)(b) and (d) EUTMR.

Acquired distinctiveness

The EUTM proprietor claims that the mark became distinctive through its use across the European Union for financial services.

In this case, it was incumbent upon the EUTM proprietor to demonstrate to the Cancellation Division that its EUTM had acquired distinctive character in the European Union either before the date of filing of the mark (23/06/2015) or between the date of registration (22/10/2015) and the application for declaration of invalidity (02/06/2016).

The EUTM proprietor did not submit any evidence to demonstrate that the mark acquired distinctiveness. In its observations of 14/09/2016, it indicated that a survey was being prepared proving the acquired distinctiveness of the term ‘BRENT’ for financial services. By later communication of 16/10/2016, the EUTM proprietor informed the Office that the survey would be available by 30/11/2016. No such evidence was submitted. Therefore, the Office decided to close the adversarial phase of the proceedings.

Since the EUTM proprietor did not demonstrate that the mark had acquired distinctiveness through use, this claim must be dismissed

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

José Antonio GARRIDO OTAOLA

Elisa ZAERA CUADRADO

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.