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TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NUMBER 3408938 BY OPEN BANKING REPORTING LIMITED TO REGISER THE FOLLOWING MARKS IN CLASSES 9, 35, 36 42: OBR Open Banking Reporting OBR OPEN BANKING REPORTING obr open banking reporting Background 1. On 24 June 2019, Open Banking Reporting Limited (“the applicant”) applied to register the above series of three marks for the following goods and services:

Class 9: Financial management software; Reporting software; Banking software.

Class 35: Financial statement preparation and analysis for businesses; Forecasting (Economic -) for business purposes; Financial records management.

Class 36: Financial management for businesses; Financial management relating to banking; Banking and financial services; Banking services; Financial evaluations [banking]; Information services relating to banking.

Class 42: Computer programming services for commercial analysis and reporting; Design of computer machine and computer software for commercial analysis and reporting.

2. On 2 July 2019 the Intellectual Property Office (“IPO”) issued an examination report in response to the application. In that report, an objection was raised under Sections 3(1)(b) and (c) of the Trade Marks Act 1994 (“the Act”) on the grounds that the marks consist exclusively of signs which may service in trade to designate the kind and intended purpose of the goods and services e.g. goods and services provided in relation to the issuance of reports relating to open banking. The examiner had provided examples from the internet showing that the term ‘open banking’ is descriptive and is in common usage by third parties. Details of these examples can be found in Annex A at the end of this report. The letters ‘OBR’ appearing in the marks was deemed to be an initialism of ‘open banking reporting’ and were considered by the examiner to be non-distinctive. In line with standard IPO procedure, a period of two months was allowed for the applicant to respond. 3. On 29 August 2019 Addleshaw Goddard LLP (“the agent”) acting on behalf of the applicant submitted written arguments in support of the marks’ alleged inherent distinctiveness. The agent acknowledged that had the marks consisted only of the words Open Banking Reporting then an objection under section 3(1)(c) would be appropriate, but in this case, he pointed out that each of the marks contain an additional element in the form of the letters ‘OBR’. He did not agree that these letters were non-distinctive and submitted that their inclusion within the marks created a sign that cannot be said to be directly descriptive of the goods and

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services applied for. It was his contention that in their totality the marks applied for are distinctive and capable of indicating single trade origin when used in relation to the goods and services applied for. 4. On 6 September 2019 the examiner responded to the agent’s submissions by stating that the letters OBR would merely be seen as an acronym of the descriptive words Open Banking Reporting contained within the marks and as such he did not consider their inclusion added any distinctiveness to the marks. The examiner maintained the objection and a period of two months was allowed for the agent to respond. 5. In the absence of any further response from the agent, on 12 November 2019 the application was refused. 6. A TM5 was duly received on 12 December 2019. Having received that Form TM5, I am now required to set out the reasons for refusal. No formal evidence has been put before me for the purpose of demonstrating acquired distinctiveness so I have only the prima facie case to consider. The Law 7. Section 3(1) of the Act reads as follows:

3(1) The following shall not be registered – (b) trade marks which are devoid of distinctive character,

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

The relevant legal principles – section 3(1)(c) 8. There are a number of judgements of the Court of Justice of the European Union (“CJEU”) which deal with the scope of Article 3(1)(c) of the Directive and Article 7(1)(c) of the Regulation, whose provisions correspond to Section 3(1)(c) of the UK Act. I derive the following main guiding principles from the cases noted below:

• Subject to any claim in relation to acquired distinctive character, signs and indications which may serve in trade to designate the characteristics of goods or services are deemed incapable of fulfilling the indication of origin function of a trade mark (Wm Wrigley Jr & Company v OHIM, C-191/01P ‘Doublemint’, paragraph 30);

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• Article 7(1)(c) (section 3(1)(c)) pursues an aim which is in the public interest that descriptive signs or indications may be freely used by all (Doublemint, paragraph 31);

• It is not necessary that such a sign be in use at the time of application

in a way that is descriptive of the goods and services in question; it is sufficient that it could be used for such purposes (Doublemint, paragraph 32);

• It is irrelevant whether there are other, more usual signs or indications

designating the same characteristics of the goods and services. The word ‘exclusively’ in Paragraph (c) is not intended to be interpreted as meaning that the sign or indication should be the only way of designating the characteristic(s) in question (Koninklijke KPN Nederland NV v Benelux Merkenbureau, C-363/99 ‘Postkantoor, paragraph 57);

• An otherwise descriptive combination may not be descriptive within the

meaning of Article 3(1)(c) of the Directive provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements. In the case of a word trade mark, which is intended to be heard as much as to be read, that condition must be satisfied as regards both the aural and the visual impression produced by the mark (Postkantoor, paragraph 99).

9. In Matratzen Concord AG v Hukla Germany SA (C-421/04), the CJEU stated that:

“…to assess whether a national trade mark is devoid of distinctive character or is descriptive of the goods or services in respect of which its registration is sought, it is necessary to take in to account the perception of the relevant parties, that is to say in trade and or amongst average consumers of the said goods or services, who are reasonably well informed and reasonably observant and circumspect, in the territory of which registration is applied…”.

10. I am also mindful of the decision of the General Court (formerly the Court of First Instance) in Ford Motor Co v OHIM, T-67/07 where it was stated that:

“…there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the category of goods and services in question or one of their characteristics”.

11. I am also aware that the test is one of immediacy or first impression, as confirmed by the General Court which, in its decision on Sykes Enterprises v OHIM (Real People Real Solutions, [2002], ECT II-5179, stated:

“…a sign which fulfils functions other than that of a trade mark is only distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94 if it may be perceived immediately as an indication of the commercial origin of the goods and services in question, so as to enable the relevant public to

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distinguish, without any possibility of confusion, the goods and services of the owner of the mark from those of a different commercial origin.”

12. It is clear from the aforementioned case law that I must determine whether or not the marks applied for will be perceived by the relevant consumer as a means of directly designating characteristics of the goods and services being provided. In order to do this, I must assess who I consider the relevant consumer to be. 13. The application covers a range of goods and services including software in Class 9; business services in Class 35 which include the preparation and analysis of financial statements, economic forecasting, and financial records management; a range of financial and banking services in Class 36 and computer programming and design services in Class 42 relating to commercial analysis and reporting. I consider the relevant consumer of these goods and services to be businesses, including banks and financial institutions, while the broad terms banking and financial services and banking services in Class 36 will also include services available to the general public. The services in Class 42 include computer programming and design of computer machines and software, all specifically for commercial analysis and reporting. I therefore consider these services to be intended for the commercial sector rather than the general public. 14. For goods and services that are clearly aimed at all businesses, and businesses within the commercial and financial sector, the level of attention paid by the consumer is likely to be higher than that given by the general public. However, for the more general services the level of attention is likely to be lower (as these are sold to the general public), but this is not to suggest that the general public would be anything less than reasonably circumspect in their purchases. In any event, I would not say the identification of different types of consumer, or differing levels of attention, has any impact upon my findings in this case – see e.g. CJEU Case C-311/11P Smart Technologies ULC v OHIM (ECLI:EU:C:2012:460), at paragraph 48, as follows:

‘the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’

15. The series of marks applied for consist of the same combination of letters and words and are therefore identical save for the differences in upper or lower-case presentation of the letters. (OBR Open Banking Reporting; OBR OPEN BANKING REPORTING; obr open banking reporting). As this change in presentation does not alter the identity of the signs, or the level of distinctiveness of each sign, for ease of reference, in this report I will refer to ‘the sign’ in the singular. 16. In considering the sign and the relationship between the goods and services applied for, I have first taken into consideration the meaning of the term ‘Open Banking’ and the definition of the word ‘reporting’. The examiner has established that ‘Open Banking’ is a term used within the banking industry to describe a relatively

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new banking service that enables customers to access all their accounts together in one place, regardless of where these accounts are held. The service offers the account holder a new way to manage, move and make more of their money by allowing them to securely share information with third parties and so benefit from new products and services. Annex B at the end of this report contains further examples of use of the term ‘open banking’ by third parties. I acknowledge that the applicant has not had an opportunity to comment on these examples, but they are provided merely to reinforce the original findings of the examiner that the term is used in trade. 17. Regarding the definition of the word ‘reporting’, Oxford Dictionary of English defines ‘report’ and ‘-ing’ as:

report – verb: [reporting verb] Give a spoken or written account of something that one has observed, heard, done or investigated. For example: “It includes revenue accounting and Vat reporting for 41 European subsidiaries” -ing – suffix: denoting a verbal action, an instance of this, or its result. For example: fighting, outing, building

18. Taking into consideration both the meaning of ‘open banking’ and the definition of ‘reporting’ it is my opinion that when used in combination, the phrase ‘open banking reporting’ clearly describes the provision of a spoken or written account (reporting) of any or all aspects of open banking. 19. The next part of my analysis takes in the nature of the goods and services upon which the sign will be used. I am mindful that refusal is only justified in relation to those goods or services in respect of which the sign designates a characteristic. In this case, Class 9 includes software specifically for financial management, reporting and banking, all of which could include software for the purpose of producing reports (reporting) relating to open banking. This goes hand in hand with the services in Class 42 which includes computer programming and computer design services specifically for commercial analysis and reporting, and which in my opinion could also include the design and programming of software for use in open banking reporting. Class 35 covers services that include the preparation and analysis of financial statements, economic forecasting, and financial records management. These services could include actual open banking reporting, or they could be services that utilise the data extracted from the open banking reports for the purpose of analysis and forecasting. Finally, Class 36 covers a range of financial and banking services all of which could include open banking reporting. I am therefore of the view that the words ‘Open Banking Reporting’ are descriptive of the goods and services. 20. My assessment does not end there as I must also consider the sign as a whole which also includes the additional letters ‘OBR’. It is true that the letters OBR could, in isolation, have many different meanings, however, within the context of the sign ‘OBR Open Banking Reporting’ in which the letters OBR immediately precede the words ‘Open Banking Reporting’ the relevant public will understand it as the self-evident abbreviation of the three word element of the sign ‘Open Banking Reporting’.

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Consequently, I do not consider these letters play any distinctive role within the sign, but instead will also be seen as describing the goods and services. 21. To support this decision I have taken into consideration the CJEU judgement in the combined cases Alfred Strigl Deutsches Patent – und Markenamt and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH v Öko-Invest Verlagsgesellschaft mbH (C-90/11 and C-91/11) in which it is stated at paragraphs 35 to 40:

35. Furthermore, there is no additional element which would allow the view to be taken that the juxtaposition of the word combination and the letter sequence is unusual or might have its own meaning which, in the perception of the relevant public, distinguishes the services offered from those of a different commercial origin (see, to that effect, Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 69).

36. By contrast, the mere fact of bringing a letter sequence, as an abbreviation, and a word combination together, without introducing any unusual variations, is liable to result in a verbal expression consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the services concerned (see, to that effect, Koninklijke KPN Nederland, paragraph 98).

37. Moreover, if, as the referring court suggests, the letter sequences at issue in the main proceedings are perceived by the relevant public to be abbreviations of the word combinations to which they are juxtaposed, those sequences cannot be more than the sum of all the elements of the mark, taken as a whole, even though they may be considered to have distinctive character in themselves.

38. On the contrary, as the Advocate General has noted in point 56 of his Opinion, the letter sequence which reproduces the initial letters of the words comprising that word combination occupies only an ancillary position in relation to the word combination. As the referring court suggests, each of the letter sequences at issue, although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation.

39. It follows that, if the relevant public perceive the marks at issue in the main proceedings, considered overall, as providing information on the characteristics of the financial services which they designate, those marks should then be considered to be descriptive, within the meaning of Article 3(1)(c) of the directive, and, therefore, as being necessarily devoid of any distinctive character with regard to those services within the meaning of Article 3(1)(b) of the directive (see, to that effect, Koninklijke KPN Nederland, paragraph 86).

40. The answer to the questions referred is therefore that Article 3(1)(b) and (c) of the directive must be interpreted as meaning that it is applicable to a word mark which consists of the juxtaposition of a descriptive word

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combination and a letter sequence which is non-descriptive in itself, if the relevant public perceives that sequence as being an abbreviation of that word combination by reason of the fact that it reproduces the first letter of each word of that combination, and that the mark in question, considered as a whole, can thus be understood as a combination of descriptive indications or abbreviations which is therefore devoid of distinctive character.

22. In this judgment, it was established that the mark in totality was considered descriptive for the services claimed, namely financial services, because the Court found that the three-letter combination ‘MMF’ would be understood as an abbreviation for the accompanying word elements (multi market fund) but only when it appeared in combination with the word elements. The Court was unconcerned with determining whether or not the three-letter combination ‘MMF’ was already established as an abbreviation for the term ‘multi market fund’, or with the extent to which it might have other meanings. This decision supports the fact that there does not need to be current use of an abbreviation in order for that abbreviation to be considered descriptive of the goods and services offered, provided the abbreviation represents the additional descriptive word combination with which it is being used.

23. I have established above that ‘Open Banking Reporting’ describes a characteristic of the goods and services applied for, and that the letters ‘OBR’ clearly and unambiguously represents the initial letter of each accompanying word. The juxtaposition of words and letter sequence within the mark do not combine in such a way that adds any element of distinctiveness to the mark. It therefore stands that the signs will be perceived as nothing more than providing information about the characteristics of the goods and services which they designate. The signs are considered to be descriptive within the meaning of section 3(1)(c) of the Act, and therefore, are devoid of any distinctive character with regard to those goods and services within the meaning of section 3(1)(b).

Conclusion 24. I have taken into account the guidance set out in relevant case law and I consider that the average consumer of the relevant goods and services will not perceive the signs as indicating trade origin of the goods and services. I therefore conclude that the marks consist exclusively of signs which may serve, in trade, to designate a characteristic of the goods and services, being the kind and intended purpose of the goods and services and which are therefore excluded from registration by section 3(1)(c) of the Act. Any mark found to be unacceptable under 3(1)(c) will automatically be found to be non-distinctive. The objection taken under 3(1)(b) is solely on the basis that the marks designate a characteristic of the goods and services and for no other reason. In other words, the objections under section 3(1)(b) and (c) in this case are co-extensive; there is no independent, contingent or separate rationale required under section 3(1)(b). 25. In this decision, for the reasons given above, the application is refused under section 37(4) of the Act because it fails to qualify under section 3(1)(b) and (c) of the Act.

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Dated this 28th day of January 2020 Helen Davies For the Registrar The Comptroller-General

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Annex A

https://www.moneysavingexpert.com/banking/open-banking/

https://developer.barclays.com/open-banking

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https://www.lloydsbank.com/online-banking/open-banking/how-openbanking-works.asp

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Annex B https://www.halifax.co.uk/aboutonline/open-banking/

https://www.nationwide.co.uk/open-banking/what-is-open-banking

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https://bank.marksandspencer.com/existing-customer-information/Open-Banking/

https://www.openbanking.org.uk/customers/what-is-open-banking/