Brent takes a tumble, trade marks invalidated for being descriptive

Anyone who follows the world of oil will recognize the term "Brent". Kat friend Jon Chan Wenqiang of Ravindran Associates in Singapore describes for Kat readers the fate of the word as a registered trademark there.

If a trader is the exclusive provider of information relating to a particular product, is he automatically conferred the right to monopolize the use of the product’s name as a trade mark? Not if the name itself is descriptive, says the Singapore Intellectual Property Office of Singapore in Chicago Mercantile Exchange Inc. v Intercontinental Exchange Holdings, Inc. [2018] SGIPOS 20.

Background

The term “Brent” refers to a particular type of crude oil, and it is also a leading internationally-recognized benchmark for oil prices. Financial products, such as crude oil futures and options, derive their pricing and value from the benchmark price of Brent oil. Intercontinental Exchange Holdings, Inc. (“Proprietor”), also known as “ICE”, is the registered proprietor in Singapore of the word marks “BRENT” and “BRENT INDEX” (collectively the “BRENT Marks”) registered for a broad specification of financial services, which includes, inter alia, services for transactions involving commodities, futures, derivatives and the like. Chicago Mercantile Exchange Inc. (“Applicant”) applied to invalidate the BRENT Marks under various sections of the Trade Marks Act (“TMA”) on the basis that they were:

(1) Devoid of any distinctive character;

(2) Exclusively descriptive of the claimed services; and

(3) Generic signs or indications, which had become customary in the current language or in the bona fide and established practices of the trade.

The learned IP Adjudicator, Professor David Llewelyn, decided in favor of the Applicant in respect of all three grounds.

Decision

Not registrable as a trade mark

The IP Adjudicator first considered that the BRENT Marks were exclusively descriptive of the claimed services. Vis-à-vis the “BRENT” mark, it was found that the mark would designate a characteristic of financial services that related to, or was connected with, Brent oil. With regard to the “BRENT INDEX” mark, it would refer to a system representing the average value of prices, shares, etc. of Brent oil, and thus designate the intended purpose and nature of the financial services.

Accordingly, because of their descriptive nature, the BRENT Marks were found to fall foul of all three grounds of invalidity advanced by the Applicant. In coming to his decision, the learned IP Adjudicator rejected the Proprietor’s contention that it was entitled to register the BRENT Marks because it was the sole provider of the “Brent” pricing information. Ultimately, this did not change the fact that the BRENT Marks were still exclusively descriptive of the claimed services.

The Proprietor’s argument that the term “Brent” was used as a trade mark was also dismissed. On the evidence, the IP Adjudicator found that the Proprietor’s use of the relevant trade mark was not the “BRENT” word simplicter but the “ICE BRENT” mark instead. A descriptive term, such as “BRENT”, could not be transformed into a registrable trade mark on its own simply by pairing it with a more distinctive element, i.e. the word “ICE”. In the same vein, the extensive use and promotion of the BRENT Marks, which were by themselves descriptive, did not per se lead to acquired distinctiveness as a trade mark.

Partial invalidation refused

Although it was open for the IP Adjudicator to order partial invalidation or qualify the claimed specification to exclude any financial services relating to Brent oil, he declined to do so. Drawing support from the decision of the EU General Court in Intercontintental Exchange Holdings, Inc v EU Intellectual Property Office (Case T-430/16), the IP Adjudicator held that the category of claimed services were interlinked in a sufficiently direct and specific way such that they formed a sufficiently homogeneous category, which rendered the BRENT Marks appropriate for a full invalidation. This was also thought to be a common-sense approach, which avoided leaving the BRENT Marks on the Register where they would inevitably be open to a non-use revocation attack.

In this regard, the IP Adjudicator’s decision highlights that a registered proprietor should not automatically assume that his trade mark will only be partially invalidated in relation to certain goods or services if the claimed specification as a whole forms a sufficiently homogenous class.

Bad faith can be found if trade mark was registered for an overly broad specification

While the ground of bad faith was not advanced by the Applicant, the IP Adjudicator nevertheless considered whether he had an independent power to invalidate the BRENT marks, in the public interest, on this basis.

The IP Adjudicator ultimately concluded that he had no power to do so as this ground was not pleaded. However, he opined that there would have been bad faith in the registration of the BRENT Marks on the particular facts before him. This was because the BRENT Marks were registered for an extremely broad specification of financial services even though it was clear that the Proprietor had no intention to use the marks in relation to any other financial services besides those relating to Brent oil.

Following from this, a trade mark proprietor should be aware that besides the possibility of revocation for non-use, his trade mark may also be susceptible to invalidation based on bad faith where he had no use or intention to use the registered trade mark in relation to the full scope of the claimed specification.