Financial Systems Software UK Ltd v Financial Software Systems Inc

Date

22 March 2001

Legislation

Trade Marks Act 1938, ss.10, 11

Keywords

additional evidence and service marks; registration of three letter marks; whether capable to distinctive character

Counsel

Denise McFarland, Fiona Clark

Solicitors:

Abboushi Associates, Charles Russell

Judge:

Chadwick, Peter Gibson, Keene LJJ.

Court:

Court of Appeal

Reported:

[2001] EWCA Civ 386, [2001] RPC 41.

Summary:

Financial Systems Software UK Ltd ('FSS Ltd') applied to register the trademark FSS as a service mark under Part B of the Register in respect of 'computer programming services; advisory and consultancy services; all relating to computer programming, all included in Class 42', on 30 November 1993. The provisions of the Trade Marks Act 1938 applied.

Financial Software Systems Inc ('FSS Inc') opposed the application and on 30 June 1995, made their own application to register the mark 'FSS' under the Trade Marks Act 1994. The Hearing Officer, relying on the Trade Marks Registry Work Manual (1989 revision) refused registration on the grounds that the letters FSS were not inherently capable of distinguishing FSS Ltd's services from services with which it had no connection.

The mark was not pronounceable and other traders would commonly use the initials in the course of trade and marketing. He also held that the mark was not capable of distinguishing in fact, as although the evidence of use showed that the letters FSS seemed to be an abbreviation of FSS Ltd, FSS had not become a trademark, as an abbreviated company name in respect of the services applied for. FSS Ltd appealed to the High Court. The judge upheld the Hearing officer's decision.

Decision:

The Court of Appeal dismissed the appeal and held:

1. under s.10(2)(a), the three letter mark was not inherently capable of distinguishing the services of FSS Ltd from the services of others. Applying W. and G. du Cros (1913) 30 RPC 660 other companies in the field in question would, without improper motive, wish to use the same mark, or one similar to it, in the ordinary course of trade. Under s.10(2)(b) on the evidence, FSS Ltd had not established use of the mark as a trademark - there was no distinctive connection with the mark FSS.
2. in addition, FSS Ltd's application to introduce additional evidence that was not before the judge, was refused. It was held that this was a paradigm example of the circumstances in which additional evidence should not be admitted, on the grounds that: it was likely to prejudice the other party; it would place the appellate court at a disadvantage; and lead to a waste of court resources.
3. although another company F.N.X had successfully registered 'FSS' as a trademark in class 9 on 25 July 1995, under the provisions of the Trade Marks Act 1994, on a proper analysis, this was not inconsistent with the decision in the current appeal.