August 23, 2018
Difficulties in registering Chartered Trade Mark Attorney as a trade mark
Difficulties in registering Chartered Trade Mark Attorney as a trade mark
I am a Chartered Trade Mark Attorney. This means I am a Registered Trade Mark Attorney (qualified by exam and admitted onto the register of trade mark attorneys) and a member of the Chartered Institute of Trade Mark Attorneys (CITMA) and therefore entitled to describe myself as a “Chartered” professional. The Institute of Trade Mark Attorneys was granted its royal charter in 2016 and the title is an indicator of professional expertise and quality (see here).

In an interesting union of subject matter, the EUIPO has refused to accept the term CHARTERED TRADE MARK ATTORNEY as an EU Trade Mark (EUTM).  It is a useful reminder of the issues involved in obtaining registered trade marks for professional titles used by organisations.

In 2017, CITMA applied to register CHARTERED TRADE MARK ATTORNEY as an EUTM in a range of classes, including class 45 in which it claimed various legal services including trade mark filing and prosecution. The examiner found the term to be descriptive and devoid of distinctive character. The argument is that each of these words is clear and the term as whole has clear meaning and simply says that the services applied for are provided by a trade mark attorney who is member of a chartered organisation. The examiner held that this does not indicate a single source of origin of those services (as a trade mark must do) and conveys no trade mark message and, importantly, found that even though “chartered” status reserved for only a small number of organisations in the UK – those who have been granted a royal charter – this does not render the sign distinctive. In reaching this conclusion the examiner could point to various previous analogous decisions such as refusals to register CHARTERED IT PROFESSIONAL and CHARTERED MANAGEMENT ACCOUNTANT.  Such an approach is also in line with UK Registry practice.

CITMA appealed this decision but the EUIPO Board of Appeal was unmoved and maintained the refusal ( Decision R2159/2017-4 of 08/05/2018). At the time of writing I am not aware if there has been a further appeal. The applicant did not fall back on the option of claiming the term had in fact acquired distinctiveness through use, not least as the application was filed very close to the time of the charter being granted.

The case highlights the difficulties (albeit in a niche area) in obtaining protection via the traditional trade mark registration route for useful terms that professionals would want to use and control.

Found this article interesting today?
Send us your thoughts: