Trade mark decision

BL Number

O/315/06

Decision date

31 October 2006

Hearing Officer

Mr A James

Mark

Chartered Financial Analyst CFA

Classes

36

Applicant

CFA Institute

Opponent

The Chartered Insurance Institute

Opposition

Sections 3(3)(a), 3(3)(b) & 4(1)(d) (Section 3(6) was also cited, but was not pursued; the Hearing Officer was not asked to make a separate finding on that ground.)

Result

Section 3(3)(a): Opposition failed. Section 3(3)(b): Opposition successful. Section 4(1)(d): Opposition failed.

Points Of Interest

• Section 3(3)(a); “a tribunal should be careful about filling in perceived gaps in the law under the guise of public policy.”

Summary

The Hearing Officer dealt first and in detail with the opposition under Section 3(3)(b), which questioned the use of the word ‘Chartered’ in the applicants’ mark. Royal Charters are awarded only to bodies which have satisfied the Privy Council that such an award is in the public interest, such as pre-eminent professional institutes. The term ‘chartered’ for years has been limited to bodies incorporated by Royal Charter. Use of the word ‘chartered’ in a professional title is an indirect indication of the quality of the services. The applicant body does not have a Royal Charter. Even without an intention to deceive (which was not alleged) such a mark was of such a nature as to deceive the public as to quality.

After a detailed analysis of the matter the Hearing Officer concluded that whilst the public might know little of the Royal significance of the word ‘chartered’; they would associate the term with a standard of quality. The opposition under Section 3(3)(b) succeeded accordingly. The Hearing Officer went on to consider the matter under Section 3(3)(a), but did not find that any detriment to public policy would arise. Neither did he find for the opponents under Section 4(1)(d).

Full decision O/315/06 104Kb