Refusal of application for a European Union certification mark

(Article 85 and Article 42(2) EUTMR)

Alicante, 06/06/2019

DLA PIPER FRANCE LLP

IP & T department 27 rue Laffitte

F-75009 Paris

FRANCIA

Application No:	017378324
Your reference:	IPT/TM/CL/C-F-A
Trade mark:	CHARTERED FINANCIAL ANALYST
Mark type:	Word mark
Applicant:	CFA Institute 915 East High Street Charlottesville Virginia 22902 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 31/05/2018 pursuant to (i) Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, and (ii) Article 85(2) EUTMR because it found that the public is liable to be misled as regards the character or the significance of the mark, for the reasons set out in the attached letter.

The applicant submitted its observations on 01/10/2018, which may be summarised as follows.

1. The non-descriptiveness of the applied certification trademark. The applied sign indeed is composed of words that exist in the dictionary, but according to relevant case-law, it is not required to protect only made-up signs. Taken as a whole it does possess a certain originality/imaginativeness or at least requires some interpretation by the relevant public. ‘CHARTERED FINANCIAL ANALYST’ is not a common expression which serves in normal usage to designate the contested services in Class 36. These terms are not descriptive at all of these services and therefore possess the minimum level of distinctive character required by settled case-law. It is actually an expression created by the applicant to designate a professional credential offered internationally by the American-based CFA Institute to investment and financial professionals. Moreover, all Google search results for ‘CHARTERED FINANCIAL ANALYST’ annexed to this writ refer as well to the applicant’s trademarks. The applicant is therefore more than legitimate to monopolize this expression and has protected trademarks at a worldwide level. The applicant already owns one (1) EUTM including together with its acronym the expression ‘CHARTERED FINANCIAL ANALYST’ for services in the fields of investment management and financial analysts (annexed in Exhibit 3). None of these trademarks have ever been held descriptive or have at any time raised absolute grounds objections of any nature. Thus, registration and use of the mark ‘CHARTERED FINANCIAL ANALYST’ by the applicant is therefore not detrimental to other undertakings, as the function of the mark ‘CHARTERED FINANCIAL ANALYST’ well provides for the guarantee of origin trademarks must stand for. Conversely, the use of ‘CHARTERED FINANCIAL ANALYST’ by other undertakings, without the applicant’s consent would be highly detrimental to the applicant’s legitimate interests. Thus, the applicant requests the Office to waive the refusal based on Article 7(1)(b) and (c), and Article (2) EUTMR.

2. The absence of any misleading character of the applied certification trademark. The applicant notes that (i) ‘the Office is considering that the applied sign has a misleading character because of the company law rules of one single country, which beside will no longer be a Member State of the European Union in a few months’, and (ii) ‘this expression is already protected and perfectly and legitimately used in the United Kingdom as an EUTM for financial analysis services under no. 001460534 ’. Thus, the applicant requests the Office to waive the refusal based on Article 85 (2) EUTMR.

3. The distinctive character of the sign acquired trough use. In the event that the Office maintains its position that the Office does not have an inherent distinctive character the applicant, claims, that in any event, its trademark has acquired distinctiveness though use for the English-speaking consumer in the EU (the relevant public with reference to which the absolute ground for refusal has been examined) and shall be accepted for registration pursuant to Article 7(3) EUTMR. The applied sign ‘CHARTERED FINANCIAL ANALYST’, also known under its acronym ‘CFA’, has a significant reputation in commerce in the European Union and worldwide for decades in the financial and investment industry as a high quality standard. The sign ‘CHARTERED FINANCIAL ANALYST’ is undoubtedly perceived as originating from the applicant and from no other undertakings, hence, fulfilling its essential function as a trademark. To prove acquired distinctiveness the applicant has submitted a total of 24 attachments as means of evidence.

4. The applied trademark is a certification mark. The applicant accompanies the regulations of use (RoU) duly submitted to the EUIPO, which meet the requirements demanded by the EUTMR. These RoU are the result of the CFA institute strategy to develop and administer codes, best practice guidelines and standards that must guide the charter holders in the finance sector when using the ‘CHARTERED FINANCIAL ANALYST’ label. The ‘CHARTERED FINANCIAL ANALYST’ title is granted by the credential organization CFA Institute certifying that they passed the certification exams and it benefits from a high reputation in the investment and financial industry.

For all the reasons stated above, the applicant requests the Offices ‘to conclude that the sign applied for is distinctive and not misleading and is capable as such of distinguishing the goods and services of the applicant from those of other undertakings and does therefore fulfil the essential function of a trademark’.

Despite the evidence of acquired distinctiveness through use being submitted, the claim under Article 7(3) EUTMR does not clearly and precisely identify whether it is intended to be a principal or a subsidiary one pursuant to Article 2(2) EUTMIR. On this basis, the Office requested the applicant on 29/03/2019 clarification on the nature of the claim. If the claim was intended to be a principal one, any additional evidence of acquired distinctiveness through use must be submitted within two months from this second official communication.

The applicant confirmed in written on 16/04/2019 that the claim under Article 7(3) EUTMR is intended to be a principal one and the evidence of acquired distinctiveness through use to take into consideration is that already submitted in the observations letter dated 01/10/2018.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Firstly, as the applicant has correctly emphasized under point 4 of its writ, the disputed sign was applied as an EU certification mark. In this regard, according to article 83(1) EUTM it shall be ‘capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified’.

In consequence, it should be kept in mind that the intended function of the current disputed sign is to distinguish the applied services which are certified from those services which are not so certified.

Article 85(1) EUTMR establishes some of the grounds for refusal for an EU certification mark, which include the general grounds for refusal of an EU trade mark application provided for in Article 42, i.e. ‘where, under Article 7, a trade mark is ineligible for registration in respect of some or all of the goods and services covered by the EU trade mark application, the application shall be refused as regards those goods or services’.

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.

By prohibiting the registration as European Union 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).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

In the official communication sent on 31/05/2018, the analysis of descriptiveness of the applied sign ‘CHARTERED FINANCIAL ANALYST’ was based in the semantic meaning of the verbal elements that compose the sign. In particular, the terms ‘CHARTERED’, ‘FINANCIAL’ and ‘ANALYST’ were explained according to the definitions of the English Oxford Living dictionaries (CHARTERED: ‘(of an accountant, engineer, librarian, etc.) qualified as a member of a professional body that has a royal charter’; FINANCIAL: ‘Relating to finance’; ANALYST: ‘A person who conducts analysis’). Therefore, in the official communication it was established that ‘the average English-speaking consumer would understand the sign as having the following meaning: a person who conducts analysis relating to finance and is qualified as a member of a professional body that has a royal charter’.

In addition, the reasoning establishing the relation between the semantic meaning of the applied sign and the goods and services requested is dully motivated in the official writ as follows: ‘the relevant English-speaking consumers would simply perceive the sign as providing information that the services in Class 36 are financial services (financial analysis, investment management and securities analysis services) provided by a person who conducts analysis relating to finance and is qualified as a member of a professional body that has a royal charter’.

Moreover, in accordance with the judgement 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, ‘it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned’. Therefore, the Office maintains that it is sufficient basis to object under descriptiveness when one of the possible meanings of the sign designates specific features of the services concerned; in this case, the kind, the quality and the characteristics being certified. As conveyed in the official letter of 31/05/2018: ‘(…) the sign describes the kind and quality of the services in question as well as the characteristics being certified’. However, to be more precise, in combination with the rationale of the objection letter transcribed in the prior paragraph, the sign describes as well the qualification of the person providing the services (i.e. the service provider), in addition to the nature and quality of the services rendered and linked certified characteristics. Therefore, the applied sign is subject of the description of characteristics that shall be available to be used by any undertaking under public interest purposes.

From the perspective of the overall assessment of the applied sign, conversely to the applicant’s opinion, the sign does not possess a certain degree of originality/imaginativeness or at least requires some interpretation by the relevant public. The applicant argues that the sign is not a common expression which serves in normal usage to designate the contested services in Class 36 and that it is actually an expression created by the applicant to designate a professional credential offered internationally by the American-based CFA Institute to investment and financial professionals. This reasoning does not contest the fact that the sign is composed of elements that have a clear and unambiguous meaning and the significance of the sign as a whole is immediately apparent to the relevant consumer without any mental exertion. Therefore, there is nothing original, resonant, requiring interpretation or setting off a cognitive process in the minds of that public, when the sign is used for the goods at issue. Moreover, surely the relevant consumer, which is, reasonably well informed and reasonably observant and circumspect, will not take a mental effort with several steps to make any sense of the mark or to deduce the meaning of the term ‘CHARTERED FINANCIAL ANALYST’. In consequence, the applied sign undoubtedly transmits to the relevant consumer a descriptive meaning in relation to the good and services in question.

Lastly, although the applicant would have proved that the sign does not constitute a ‘usual, meaningful expression’ in relation to the services applied for, in accordance to the case-law of the European courts reflected before (judgment of 12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39), a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR.

In other words, given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Articles 7(1)(b) EUTMR, as it is incapable of performing the essential function of a certification mark, which is to distinguish goods or services certified by one certifier (i) from those that are not certified at all and (ii) from those certified by another certifier.

Concerning the observation referring to the fact that the applicant already owns an EUTM that includes the expression ‘CHARTERED FINANCIAL ANALYST’, among other verbal and figurative elements, for services in the fields of investment management and financial analysts reflected in pages 37-38 of Exhibit 3, which corresponds to EUTM n. 001460534 for class 42 filed on 13/01/2000 [EU collective mark]; the applicant should note the following. According to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35). ‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

In consequence, the prior EUTM registration differs from the disputed one in three points: (i) the registered mark is a figurative sign whereas the disputed one is a word mark, therefore lacking the latter one of the supplementary letters ‘CFA’ and the additional figurative element of the elliptical shape displayed in the middle of the sign where ‘CFA’ stands, but coinciding in the terms ‘CHARTERED FINANCIAL ANALYST’; (ii) the registered mark is an EU collective mark governed by Articles 74-82 EUTMR and Article 16 EUTMIR whereas the disputed one was applied as an EU certification mark ruled by different provisions, in particular, Articles 83-93 EUTMR and Article 17 EUTMIR; and (iii) the registered mark is protected for services in class 42 whereas the applied certification mark seeks protection for services in class 36. Moreover, it shall be stressed that, every sign, like the one object of this writ, is examined by this Office based on its own merits and characteristics, in the light of the EUIPO current practice, and always in conformity with applicable provisions of the EUTMR and the relevant jurisprudence. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77; OHIM v Erpo Möbelwerk, § 45, and OHIM v BORCO-Marken-Import Matthiesen, § 45). In addition, during the examination process of any applied sign, the Office acts according to the exercise of circumscribed powers and not as a matter of discretion. Therefore, the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77; 12/12/2013, C-70/13 P, Photos/com, EU:C:2013:875, § 44; 25/09/2015, T-209/14, Grünes Achteck (fig.), EU:T:2015:701, § 64).

The rationale provided to support the absence of any misleading character of the applied certification trademark is inadequate. The Office cannot take into consideration an unfounded argument such as: ‘the Office is considering that the applied sign has a misleading character because of the company law rules of one single country, which beside will no longer be a Member State of the European Union in a few months’. Until the United Kingdom does not officially become a non-EU Member State, it is still part of the Union. In this regard, the EUTMR and other associated norms, are of full application to the applied certification trademark; meaning, if the term ‘CHARTERED’ is also protected under the United Kingdom Company Law and for the relevant English-speaking consumer, in particular from the United Kingdom, the applied certification trademark ‘CHARTERED FINANCIAL ANALYST’ would be misleading as regards the character or the significance of the mark, as it is likely to be taken to be something other than a certification mark, Article 85(2) EUTMR is triggered.

As already conveyed in the official communication of 31/05/2018:

• the relevant public would understand the sing as having the following meaning: ‘a person who conducts analysis relating to finance and has been granted in the United Kingdom a chartered status by the Queen by means of the authorisation of the Privy Council’

• (…) ‘the sign for which protection is sought would clearly be misleading for the relevant public when used in connection with financial analysis, investment management and securities analysis services in Class 36, as it conveys clear information indicating that the services designated under this sign are rendered by a person who conducts financial services and has been granted in the United Kingdom a chartered status by the Queen through the authorisation of the Privy Council. In other words, the sign is misleading as to the message that it certifies a quality, namely that the financial services are provided by a professional who has received an endorsement under the United Kingdom’s Royal Charter’.

The foregoing justification is reinforced as well by the actual evidence submitted by the applicant in its Exhibit 3, where it proofs all the registrations obtained of its sign around the world (e.g. Japan, United Arab Emirates, United States of America, etc.). For this reason, the Office took a closer look into those registrations acquired in the United Kingdom, which is the particular Member State of the European Union, whose public will be misled under the current disputed certification mark. From the list submitted, only two registrations were obtained in the United Kingdom, and none of them included the term ‘CHARTERED’. Most probably because by registering a sign similar to the one here under discussion they would have faced a rejection on the same basis used in this writ. See below:

If the applicant would have shown to have the applied sign ‘CHARTERED FINANCIAL ANALYST’ registered in the United Kingdom, the objection on misleading character would have had doubts to be raised. However, it is clearly not the case.

With regard to the applicant’s argument that ‘this expression is already protected and perfectly and legitimately used as an EUTM for financial analysis services under no. 001460534 ’; this point has already been widely discussed and reasoned in earlier paragraphs with regard to the same prior EUTM registration. To avoid repetitions, please refer to the same ones. However, to reinforce the main argument, please note that the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35). In other words, signs are examined based on its own merits and characteristics, in the light of the EUIPO current practice, and always in conformity with applicable provisions of the EUTMR and the relevant jurisprudence. ‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

After examining all the arguments brought forward by the applicant the Office upholds the grounds for refusal raised already on 31/05/2018 and that correspond to (i) Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, and (ii) Article 85(2) EUTMR because it found that the public is liable to be misled as regards the character or the significance of the mark.

According to Article 7(3) EUTMR, a trade mark may still be registered despite the fact that it does not comply with Article 7(1)(b), (c) or (d) EUTMR, provided that it ‘has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’. Article 7(3) EUTMR constitutes an exception to the rule laid down in Article 7(1)(b), (c) or (d) EUTMR, whereby registration must be refused for trade marks that are per se devoid of any distinctive character, for descriptive marks, and for marks that consist exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade. Distinctive character acquired through use means that, although the sign ab initio lacks inherent distinctiveness with regard to the goods and services claimed, owing to the use made of it on the market, at least a significant proportion of the relevant public has come to see it as identifying the goods and services claimed in the EUTM application as originating from a particular undertaking. Thus, the sign has become capable of distinguishing those goods and services from those of other undertakings because they are perceived as originating from a particular undertaking. In this way, a sign originally unable to be registered under Article 7(1)(b), (c) or (d) EUTMR can acquire a new significance, and its connotation, no longer purely descriptive or non-distinctive, permits it to overcome those absolute grounds for refusal of registration as a trade mark.

Notwithstanding, it shall be stressed that the Office, for reasons of procedural economy, cannot proceed to examine in detail the claim under Article 7(3) EUTMR and related evidence of acquired distinctiveness through use submitted in the observations letter dated 01/10/2018 because only the absolute grounds for refusal falling under Article 7(1)(b) and (c), i.e. trade marks which are devoid of any distinctive character and are descriptive of the goods and services for which protection is sought, can be overcome by proving acquired distinctiveness as a consequence of the use which has been made of it. Moreover, such claim will need to be supported by evidence also showing that the applied sign is in fact recognised on the relevant market as a certification mark. However, during the observations writ the applicant highlighted several times the origin function stemming from the applied sign and not the certification one: e.g.1, ‘the sign ‘CHARTERED FINANCIAL ANALYST’ is undoubtedly perceived as originating from the applicant and from no other undertakings, hence fulfilling its essential function as a trademark’ (page 5); and e.g.2, ‘registration and use of the mark ‘CHARTERED FINANCIAL ANALYST’ by the applicant is therefore not detrimental to other undertakings, as the function of the mark ‘CHARTERED FINANCIAL ANALYST’ well provides for the guarantee of origin trademarks must stand for’ (page 3). In consequence, the objection on the misleading character of the applied certification mark under Article 85(2) EUTMR cannot be overcome under Article 7(3) EUTMR as nothing in the EUTMR contemplates such possibility. In consequence, one of the existing grounds for refusal cannot be overturned and is sufficient basis on its own to reject the disputed sign.

For the abovementioned reasons, and pursuant to Article 85(2) EUTMR, the application for European Union trade mark No 17 378 324 is hereby rejected for all the services claimed.

Class 36 Financial analysis, investment management and securities analysis.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

María Luisa ARANDA SALES