Financial Systems Software (UK) Ltd v Financial Software Systems Inc

For registration of a three-letter service mark under the Trade Marks Act 1938, the mark must be inherently capable of distinguishing the applicant’s services, or must have acquired that capacity through use as a trade mark. Initials commonly used as abbreviations of corporate names may remain available for legitimate use by other traders. The relevant question is whether other traders would wish, without improper motive, to use the same initials or a similar mark in the ordinary course of business. Use of initials as a company-name abbreviation does not establish service-mark use unless the initials also distinguish the relevant services. Registration is assessed by reference to the application date and the particular goods or services specified.

Financial Systems Software (UK) Ltd applied in 1993 to register “FSS” in Part B for computer programming, advisory and consultancy services relating to computer programming under the Trade Marks Act 1938. Financial Software Systems Inc opposed the application under sections 10 and 11. The Registrar rejected the opposition under section 11 but refused registration under section 10, finding that the mark was not inherently capable of distinguishing and had not acquired distinctiveness through use.

Mrs Justice Arden dismissed the applicant’s appeal. The applicant appealed to the Court of Appeal and sought to introduce further evidence. The central issues were the inherent capacity of “FSS”, the character of its use, and whether the additional evidence should be admitted.

1. Appeal dismissed. The Court of Appeal upheld the Registrar’s refusal of registration and Mrs Justice Arden’s decision. The applicant was ordered to pay the respondent’s appeal costs, including an interim payment of £12,000.
2. The application had to be determined under the Trade Marks Act 1938, because it was made before the Trade Marks Act 1994 came into force and no notice had been given under paragraph 11 of Schedule 3. The relevant date was 30 November 1993.
3. Applying W. & G. Du Cros Ltd (1913) 30 RPC 660, the Court held that “FSS” was not inherently capable of distinguishing the applicant’s services. Other traders in the computer-services and financial-services fields might legitimately use corporate names containing words such as “financial”, “software”, “systems”, “services” and “support”, and might abbreviate those names to “FSS”. The assessment had to proceed on the basis that the applicant did not already enjoy trade mark protection.
4. For section 10(2)(b), relevant use was use as a trade or service mark. Under section 68, this required use indicating, or intended to indicate, a connection in the course of business between the services and the person entitled to use the mark. Initials used as an abbreviation of a company name could also distinguish services, but the evidence had to show that they were used for that purpose and not merely as the abbreviation. The evidence did not establish sufficient service-mark use.
5. The further evidence was refused. It had been known to the applicant and could have been obtained before the Registrar or the judge. Allowing it on appeal would risk prejudice, deprive the appellate court of the trial judge’s assessment, and waste court resources.
6. The Court declined to express a view on the separate 1994 Act application concerning class 9 goods. Different relevant dates, statutory regimes, evidence and goods or services meant that inconsistent outcomes were not necessarily contradictory.

• Court of Appeal (Civil Division): Appeal dismissed. The Court upheld the order of Mrs Justice Arden.
• Chancery Division: Mrs Justice Arden dismissed the applicant’s appeal from the Registrar’s decision.
• Registrar of Trade Marks: The opposition under section 10 succeeded; the opposition under section 11 was dismissed.