In a decision rendered by the Intellectual Property Office of Singapore (“IPOS”), it was held that the “BRENT” and “BRENT INDEX” trade marks registered by Intercontinental Exchange Holdings, Inc. is to be declared invalid as Chicago Mercantile Exchange Inc. successfully pleads all grounds of invalidity in their application.
(A) Who are the parties involved in this case?
(a) Chicago Mercantile Exchange Inc. (“Applicant”);
The Applicant is one of the corporate entities forming CME Group Inc. and operates marketplaces for the exchange, trading and clearing of both physical and derivative financial products, including interest rates, equity indices, foreign exchange, energy, agricultural commodities, metals, weather, and real estate.
(b) Intercontinental Exchange Holdings, Inc. (“Respondent”)
The Respondent is a Fortune 500 company which operates a number of leading exchanges such as the New York Stock Exchange and ICE Futures Europe and offers a broad range of trading, clearing and risk management services in relation to regulated futures and over-the-counter markets, including the provision of a variety of market information on historical and real-time prices, indexes and tick-data.
(B) What actually happened?
Both the Applicant and the Respondent are large corporations headquartered in the United States of America and are involved in the business of operating market exchanges, including the generation and dissemination of data, for a variety of financial products.
The Respondent is the Registered Proprietor of the “BRENT” and “BRENT INDEX” trade marks in Class 36 in Singapore (“Subject Marks”).
The following time-line occurred prior to the hearing of the present case:
- The Applicant applied for declarations of invalidity of the Subject Marks on 27 July 2016.
- Counter-statements were filed by the Respondent on 23 November 2016 in defence of the registrations of the Subject Marks.
- The Applicant filed evidence in support of its application for declarations of invalidity of the Subject Marks on 9 May 2017.
- The Respondent filed its evidence in support of its registrations of the Subject Marks on 8 September 2017.
- The Applicant filed evidence in reply on 8 January 2018.
- Following the close of evidence, a Pre-Hearing Review was held on 7 February 2018 and leave was eventually granted to the parties to file supplementary evidence.
- The Respondent filed is evidence in reply on 5 June 2018.
- The Applicant filed its supplementary evidence in reply on 3 July 2018.
- The parties then filed their written submissions and made their oral submissions before the IP Adjudicator (“Hearing Officer”) on 24 September 2018.
The Applicant seeks to invalidate the Subject Marks on three grounds in the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) as follows:
- Section 7(1)(b) read with Section 23(1);
- Section 7(1)(c) read with Section 23(1); and
- Section 7(1)(d) read with Section 23(1).
(C) What is/are the issue(s) in dispute?
In reaching a decision, the following are to be determined independently:
- Whether the registration of the Subject Marks may be declared invalid on the ground that the Subject Marks were registered in breach of Section 7(1)(b) of the Act that the Subject Marks are devoid of any distinctive character;
- Whether the registration of the Subject Marks may be declared invalid on the ground that the Subject Marks were registered in breach of Section 7(1)(c) of the Act that the Subject Marks are marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and
- Whether the registration of the Subject Marks may be declared invalid on the ground that the Subject Marks were registered in breach of Section 7(1)(d) of the Act that the Subject Marks are marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
(D) Holding
Having considered all pleadings and evidence filed and submitted, it was held that the Applicant succeeds in its applications for a declaration of invalidity of the “BRENT” and “BRENT INDEX” marks on all grounds. The Subject Marks are therefore invalid and in accordance with Section 23(10) of the Act, the registrations of the Subject Marks are deemed to be never made, but such would not affect past and closed transactions.
(E) Rationale for holding
The absolute grounds for refusal of a trade mark contained in Sections 7(1)(b), (c) and (d) of the Act, as relied on the Applicant are three grounds which a mark may be removed from the register upon a successful application for invalidity brought under Section 23(1) of the Act. Once removed from the register, the mark is to be treated as if it had never been registered, unless the Respondent is able to show under Section 23(2) that notwithstanding the mark being unregistrable, it has in fact acquired distinctiveness subsequent to the date of application.
The antecedent question before considering distinctiveness is to ascertain the average consumer relevant to the present case which submitted by the Applicant are “financial services professionals, in particular investment professionals” or “high net-worth or investment-savvy individuals”, whilst the Respondent submitted that relevant consumers would be “specialist traders in the financial industry in Singapore who are dealing with and/or familiar with financial products in the oil futures and oil options markets”, to which the Hearing Officer took eventual preference of the Applicant’s submission of average consumer to the present case.
Moving on, the Hearing Officer considered the meaning behind the “BRENT” mark, to which he highlighted that the Respondent has cited seven possible dictionary meanings and stated that none of the seven meanings relate in any way to the registered services and/or crude oil and cannot be said to be descriptive of the same. The Hearing Officer noted however that the meaning behind the “BRENT” mark must be viewed in the context of the services in respect of which the Respondent has registered the Subject Marks. Tracing back to fifty years ago, the Hearing Officer noted that the term “Brent” has been used to refer to a particular type of light and sweet crude oil extracted from the North Sea and by the early years of the development of the North Sea oilfields in the 1960s, the Shell Oil Company has adopted the term “Brent” to describe such crude oil in accordance with naming its oilfield after birds, which in this circumstances was the Brent goose (or Brant). The Applicant submitted that crude oil with specific physical and chemical characteristics as extracted from the Brent, Forties, Oseberg and Ekofisk oilfields in the North Sea are known as the “Brent blend” which now makes up nearly half of the internationally traded supply of crude oil. Further to the physical crude oil market, the Applicant also submitted with supporting examples that the term “Brent” is now a leading internationally-recognised benchmark for oil prices which financial products such as crude oil futures, crude oil forwards, crude oil options and oil/petroleum product swaps derive their pricing and fluctuating value from the benchmark. Whilst there were representative examples of “Brent” being used to describe both a particular physical product and a benchmark for financial products prior to the registration date of the Subject Marks, the Respondent nonetheless submitted that it has used the term “BRENT” as a trade mark and asserts that it has acquired distinctiveness by being the sole provider of the Brent pricing benchmark, in the context of the relevant goods or services (i.e. futures). With regard this, the Hearing Officer opined that being the only provider of a named product does not automatically allow the provider to register the product as a trade mark and that in the present case the Hearing Officer also noted that the Respondent had registered the Subject Marks with far wider specifications than just the relevant goods or services.
With regard the meaning ascribed to the “BRENT INDEX” mark, the Hearing Officer noted and agreed with the several points of analysis of the EU General Court in Intercontinental Exchange Holdings, Inc v EU Intellectual Property Office (Case T-430/16). Firstly, the Hearing Officer adopted the analysis that “it is common ground that the expression ‘Brent Index’ is merely a juxtaposition of the words “Brent” and “Index” and does indeed refer to a figure system or scale representing the average value of prices, shares and so forth of a crude oil coming from the Brent oilfield in the North Sea, which is also used as a benchmark for the prices of other crude oils”. Secondly, the Hearing Officer further agreed with the analysis that the juxtaposition of the terms “Brent” and “Index” is “consistent with English lexical and grammatical rules and does not contain any unusual element in its syntax which would make it possible for that expression to be anything other than the mere combination of the words “Brent” and “Index”. Lastly, the Hearing Officer accepted the analysis that it would be fairly obvious to the relevant professionals of the intended purpose of the goods and services which the “BRENT INDEX” mark is applied for due to the fact that it is linked to finance.
Returning back to the question of distinctiveness, the Hearing Officer noted that it ought to be in relation to the three grounds of invalidity relied by the Applicant and the same should be considered independently:
(a) Section 7(1)(b) of the Act
In determining whether a trade mark is devoid of distinctive character under Section 7(1)(b), it must be considered the specification in respect of which registration is sought or which invalidity application has been obtained. Whilst the Hearing Officer acknowledged the precedent of Han’s (F&B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 that there is no easy answer to the question of how much distinctive character there must be to constitute a registrable mark, he noted that it is clear that a trade mark that is exclusively descriptive cannot have any distinctive character as an indication of origin, or in the Hearing Officer’s explanation, that it is not capable of distinguishing the trade origin of the particular services of one undertaking from those of others offering or wishing to offer the same or similar services. In view of the evidence submitted as regard the specification of services in the present case, the Hearing Officer found that the Subject Marks are devoid of any distinctive character contrary to Section 7(1)(b). The Applicant therefore succeeds on the ground of invalidation under Section 7(1)(b).
(b) Section 7(1)(c) of the Act
The Hearing Officer referred to the precedent of Love & Co Ptd Ltd v The Carat Club Pte Ltd that a mark must be refused registration under Section 7(1)(c) of the Act if at least one of its possible meanings designates a characteristics of the goods or services concerned, and the Hearing Officer highlighted in this precedent (also as reflected in Section 7(1)(c)) that such characteristic of a particular good or service includes “the kind, quality, quantity, intended purpose, value, geographical origin, the time of production or the goods or of rendering of services”. In view of all the evidence submitted by the Applicant, the Hearing Officer found that at least one of the possible meanings of “BRENT” designates a characteristic of the financial services set out in the specification in which the Respondent uses or intends to use the “BRENT” mark, namely, financial services relating to or connected with the Brent crude oil. In light of this specification for which the “BRENT” mark is registered, the Hearing Officer opined that the word “Brent” that is descriptive in the context of crude oil and related financial services cannot be transformed into a distinctive mark properly registrable on its own as a trade mark through the use by the Respondent. The Hearing Officer also reiterated again that whilst the Respondent may repeat their statement of acquired distinctiveness that it is and has been the sole provider of “BRENT” pricing information, this does not lead inexorably to the conclusion that “Brent” is a registrable trade mark. Although not specifically requested by the Applicant, the Hearing Officer did consider whether the evidence submitted were sufficient to partially invalidate the “BRENT” mark but ultimately decided that such was not appropriate for the case. As such, the Hearing Officer found that the Applicant may succeed on the ground of invalidation under Section 7(1)(c) of the Act in respect of the “BRENT” mark.
In relation to the “BRENT INDEX” mark, the Hearing Officer do not consider the “BRENT INDEX” mark a distinctive trade mark despite all evidence submitted by the Respondent. The Hearing Officer opines that the average consumer of financial services in Singapore could not fail to be informed immediately by use of the “BRENT INDEX” mark of the intended purpose and nature of the particular financial service and such would be the exact opposite of what is necessary to register a trade mark. Again, the Hearing Officer considered whether it was possible for the “BRENT INDEX” mark to be partially invalidated and decided akin to the “BRENT” mark that it would not. Hence, the Hearing Officer found that the Applicant may succeed on the ground of invalidation under Section 7(1)(c) of the Act in respect of the “BRENT INDEX” mark.
(c) Section 7(1)(d) of the Act
The essential question to be answered is whether the registration date of the Subject Marks was distinctive as an indication of trade origin or whether it was a generic sign or indication that should be kept free for honest traders to use without hindrance. The Hearing Officer referred to the Court of Appeal decision in Wing Joo Loong Ginseng (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2009] 2 SLR(R) 814 which in exploring the ground for refusal under this provision clarified that the onus of proving that the challenged mark is generic is not to be easily discharged and that such an onus would fall on the party making the claim. In view of the evidence submitted and his findings on the Subject Marks under Section 7(1)(b) and (c), the Hearing Officer found that the Applicant has discharged this onus. The Hearing Officer highlighted again that this provision ought to be considered independently and does not flow from the finding of Section 7(1)(b) and (c). However, he maintained that the evidence has established that the Subject Marks were used customarily in the language of those involved in trading and otherwise dealing with financial derivatives connected with or directly or indirectly related to the oil and oil-products markets to describe a sweet crude oil with a particular geographical origin. The Hearing Officer was hence persuaded that the Subject Marks are generic word in the relevant market that in the public interest should not be owned by any trader for services provided to those in the market. As such, the Hearing Officer found that the Applicant succeeds on the ground of invalidation under Section 7(1)(d).
Point of Interest
Although the Applicant in this case did not rely on the ground of bad faith under Section 7(6) of the Act, the Judge noted nonetheless that whilst he does not have the inherent power prescribed by the Act to decide on his own volition and in public interest whether the Respondent had registered the Subject Marks in bad faith, he mentioned that given all the circumstances of the present case, if such power vested in him, he would have exercised it in favour of the Applicant as it was clear from the Respondent’s own description of its business that it has never used nor had the intention to use either of the Subject Marks in relation to any financial services except those in reference to the Brent crude oil from the BFOE oilfields. He further noted that whilst a finding of bad faith should not be made from the mere fact of an overly broad specification, there are additional circumstances in the present case that would have justified that the Respondent had registered the Subject Marks in bad faith.
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This article is written by Renee Xavier from Alpha & Omega.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.