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Chicago Mercantile Exchange Inc. v Intercontinental Exchange Holdings Inc.

In a recent proceeding initiated by the Chicago Mercantile Exchange Inc. (CME), two trademarks “BRENT” and “BRENT INDEX” (“Subject Marks”) registered in the name of Intercontinental Exchange Holdings Inc. (ICE) were declared invalid by the Intellectual Property Office of Singapore on 24th September 2018.

The grounds of invalidity pleaded by CME were:-

 (1) The Subject Marks are devoid of any distinctive character (Section 7(1)(b) of the Act)

(2) The Subject Marks designate a characteristic of the goods or services applied for. (Section 7(1)(c) of the Act)

(3) The Subject Marks consist exclusively of signs or indications which have become customary in the current language. (Section 7(1)(d) of the Act)

Ground of Invalidation under Section 7(1)(b)

In order to decide upon the first ground of invalidity, the IP Adjudicator reflected upon the meaning of the word BRENT. He traced the origin of the word to 1960s, when the Shell Oil Company adopted it to describe a particular type of light and sweet crude oil extracted from the North Sea. CME also submitted supporting evidence that the word “Brent” is now a leading internationally-recognised benchmark for oil prices and financial derivatives.

Further, the Adjudicator referred to the judgment in Nestlé SA and another v Petra Foods Limited wherein it was explained that a mark which merely describes either the product or the trader will not generally be regarded as distinctive.

Therefore, upon careful review of the meaning of the word Brent, all the evidence submitted by CME and the precedent laid down by earlier caselaw, the Adjudicator declared that, at least one of the possible meanings of BRENT designated a characteristic of the financial services as set out in the specification and thus the Subject Marks were devoid of distinctive character under Section 7(1)(b) of the Act.

Ground of Invalidation under Section 7(1)(c)

The IP Adjudicator referred to the judgment in Love & Co Ptd Ltd v The Carat Club Pte Ltd , wherein it was held that that a mark must be refused registration, if at least one of its possible meanings designates a characteristics of the goods or services. The Adjudicator noted that at least one of the possible meanings of BRENT designated a characteristic of the financial services set out in the specification and the average consumer in Singapore who regularly dealt in financial services would not fail to make a connection between the Subject Marks and the characteristics of the services for which the marks have been registered.

Ground of Invalidation under Section 7(1)(d)

Upon considering the plethora of evidence submitted by both parties, the Adjudicator was convinced that Brent is a sign used customarily in the language of those involved in trading and otherwise dealing with financial derivatives connected with oil.

Accordingly, the Subject Marks were declared invalid in accordance with Section 23(10) of the Act.

Contributor: Denise Mirandah

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