England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
MRS JUSTICE ARDEN

		Royal Courts of Justice Strand, London, WC2A 2LL Thursday 22nd March 2001

LORD JUSTICE CHADWICK :

1. This is an appeal from an order made on 13 August 1999 by Mrs Justice Arden on an appeal under section 18(6) of the Trade Marks Act 1938 against the decision of the Registrar on an application by Financial Systems Software (UK) Limited (to which I will refer as "the Applicant") to register as a service mark in Part B of the register of trade marks the letters 'FSS' in respect of services described in the application as "computer programming services; advisory and consultancy services, all relating to computer programming; all included in class 42". The application was opposed by Financial Software Systems Inc ("the Opponent"). The Registrar, following a hearing before a Hearing Officer (Mr Knight) appointed for that purpose, refused registration. The judge upheld that decision. Permission to appeal from her order was granted by this Court (Lord Justice Aldous) on 3 November 1999.
2. The application for registration was made on 30 November 1993. Accordingly, it was an application which, when made, was made under the Trade Marks Act 1938 (as amended by the Trade Marks (Amendment) Act 1984). The application was pending at the date when the new Act, the Trade Marks Act 1994, came into force; but no notice of a claim to have the registrability of the mark determined in accordance with the new Act was given under paragraph 11 of schedule 3 to that Act. Accordingly the provisions of the 1938 Act (as amended) have continued to apply to the application.
3. In order for a service mark to be registrable in Part B of the register kept under the 1938 Act it must be capable, in relation to the services in respect of which it is proposed to be registered, of distinguishing services with the provision of which the proprietor of the mark is or may be connected in the course of business from services with the provision of which he is not so connected, either generally or, where the service mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration – see section 10(1) of the 1938 Act as applied to service marks. Section 10(2) of that Act (as so applied) is in these terms:

"In determining whether a service mark is capable of distinguishing as aforesaid the tribunal may have regard to the extent to which –

a) the service mark is inherently capable of distinguishing as aforesaid; and

b) by reason of the use of the service mark or of any other circumstances, the service mark is in fact capable of distinguishing as aforesaid."

Section 11 of the 1938 Act provides that it shall not be lawful to register as a service mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice.

4. The application for registration, made under section 17(1) of the 1938 Act, was advertised, as required by section 18(1) of that Act. Notice of opposition was given by the Opponent on 29 June 1995. The grounds of opposition were (i) under section 10 of the Act, that the mark consisted of three letters and was therefore neither adapted to distinguish nor capable of distinguishing the services of the Applicant and any use of the mark prior to the date of application was insufficient to overcome those objections; and (ii) under section 11 of the Act, that any use of the mark by the Applicant would cause confusion with the use of a similar mark by the Opponent. On the following day, 30 June 1995, the Opponent applied to register its own mark (being the letters 'FSS' incorporated in a device or logo) under classes 9 and 42. That application was, of course, made under the 1994 Act.
5. The Registrar, in a written decision dated 19 January 1999 and signed by the Hearing Officer on his behalf, held, in effect, that the letters 'FSS - were not inherently capable of distinguishing the Applicant's services from services with which the Applicant had no connection. He reached that conclusion on the basis of guidance then provided by the Trade Marks Registry Work Manual (1989 revision). The following sentence appears at paragraph 9-206:

"Marks which consist simply of a single letter or of two or three letters and are not pronounceable, are not acceptable prima facie because of the common use of initial letters by traders in general in marketing their goods and for other purposes in trade (see the W&G case - 30 RPC 661)."

6. The reason why two or three letter marks which cannot be articulated as a pronounceable sound were thought not to be acceptable for registration (without something more) was that they were thought not, of their nature alone, to be capable of distinguishing the goods of one trader from those of another. The point was made by Lord Shaw of Dunfermline in W. & G. Du Cros Ltd (1913) 30 RPC 660 at page 669, when citing with approval the reasons given by the Comptroller- General for his decision to refuse registration of the mark 'W. & G.':

"He said :- 'It would, I think, be difficult to say that letters, as a rule, are in any way distinctive. The letters of the alphabet ought to, and should, be open to the general public for use.' My Lords, the Registrar is dealing with that as a general rule; he is not excluding any particular or exceptional case; and I think your Lordships are all of opinion that his judgment upon that topic is correct. But following on, and speaking no doubt from a wide experience, he said :- 'Possible combinations of the letters of the alphabet are limited, and the present combination 'W. and G.' might, I think, be found to be in many thousands of cases the initials of traders, or used in some way in trade or manufacture. Prima facie, therefore, it would appear so far as letters are concerned, that they are not per se adapted to distinguish the goods of one trader from those of another.' And in a later portion of what I may venture to describe as most admirable judgment and description of the whole situation by this Official, he said :- 'This question should be asked in all such cases: Will the registration of the Trade Mark cause substantial difficulty or confusion in view of the rights of user by other traders'?"

7. The Registrar went on, as section 10(2)(b) of the 1938 Act required, to consider whether the evidence of use by the Applicant of the letters 'FSS' as a service mark, before the priority date (30 November 1993) was such as to enable him to conclude that the mark was in fact capable of distinguishing the Applicant's services from those of other suppliers, in relation to the class of services in respect of which registration was sought. After reviewing the evidence of use by the Applicant, he said this:

"Most of the examples provided in the evidence of the letters FSS seem to me to be as an abbreviation of the name of the company. And whilst it is perfectly possible for the abbreviated name of a company to become a trade mark (ICL, for example) it does require, in my view, focused attention by the proprietor to do so. From a scrutiny of all the Applicant's evidence, I am unable to determine that they have used the term FSS in such a focused way in relation to the services covered by this application."

He then considered observations of Mr Justice Laddie in Mercury Communications Limited v Mercury Interactive (UK) Limited [1995] FSR 850 and went on:

"In my view the evidence in this case does not support the applicant's very broad claim to 'computer programming services' at large or to 'advisory and consultancy services relating to computer programming'. I have gone on therefore to consider whether the trade mark FSS has been used on any computer programming services and consultancy services in a field in which the applicant has a particular interest in order to determine whether despite the fact that FSS has not been used on computer programming services at large, and related consultancy services, there has been use in a particular field i.e. connected with financial services to which the specification could be limited. In my view there has not. I can see nothing in the evidence filed that the applicants are known either under the company name or under the trade mark FSS for anything other than pre-recorded programs for use in the field of financial services. Whilst some of the advertisements which have been exhibited do mention consultancy services I am not able to extrapolate and say that these services therefore relate to pre recorded programs because I have no confirmatory evidence that they do. But, more importantly, I have no evidence that any service which may have been supplied by the applicants has been supplied under the trade mark applied for."

He concluded:

"In all of the circumstances and for the reasons given above the trade mark FSS is not registrable prima facie and has not, in my view, through use become capable of distinguishing the services of the applicant from those of other suppliers at the date of application. The opposition founded on Section 10 therefore succeeds."

8. The Hearing Officer then turned to the opposition under section 11 of the 1938 Act. He expressed himself satisfied that the Opponent's mark (which he described as "the composite mark") was honestly coined without reference to the Applicant's mark. He observed that, if both marks were used in the market place, there was a risk of confusion and deception amongst a substantial number of persons. But he was not satisfied that the Opponent had established through use any sufficient reputation in the composite mark at the date that the Applicant sought registration of its mark. So he concluded that, as at that date, the use by the Applicant by its mark in respect of the services listed in the application was not likely to cause confusion or deception on the part of any member of the relevant public. Accordingly he dismissed the opposition based on section 11 of the Act.
9. The applicant appealed to the High Court from the decision of the Registrar, as it was entitled to do under section 18(6) of the 1938 Act. The grounds of that appeal, as set out in the originating notice of motion dated 17 February 1999, extend over 16 numbered paragraphs. But they may, I think, fairly be summarised as follows: (i) that the Hearing Officer erred in relying on the practice set out in the Trade Marks Registry Work Manual (1989 revision) to which I have referred when holding that a three letter mark which cannot be articulated as a pronounceable sound ought, prima facie, to be rejected on an application for registration; it is said that he should have followed the practice set out in the 1998 revision of the Work Manual; (ii) that the Hearing Officer had been wrong to conclude that the Applicant had not used the mark as a trade mark, but merely as an abbreviation of the company name; (iii) that the Hearing Officer was wrong to conclude, in reliance on the decision of Mr Justice Laddie in the Mercury Communications case, that the evidence did not support the Applicant's claims to have been a supplier of computer programming services or of advisory and consulting services relating to computer programming.
10. On the hearing of the appeal it appears that the challenge against the Hearing Officer's approach to the test of inherent capacity to distinguish, under section 10(2)(a) of the Act, was not pursued. The judge recorded that, although counsel for the applicant contended that the position in relation to three letter marks had become less strict since 1989, it was accepted that the main thrust of the appeal was that the Hearing Officer's conclusion under section 10(2)(b) of the 1938 Act – capacity to distinguish acquired through use - was against the weight of the evidence. The judge rejected that contention. She said this, at page 5 line 28 to page 6 line 7 of the written judgment which she handed down:

"Reviewing the evidence, I find that the mark FSS had not become distinctive by use as denoting products or services of the Appellant. The Hearing Officer in my view was right so to conclude. There is virtually no evidence from which the conclusion could be drawn that the initials FSS were being used other than as an abbreviation for the Appellant's name. Any other use was insignificant. I do not therefore consider that the Hearing Officer's decision was against the weight of the evidence. It is also clear from the W. and G. du Cros case that the Registrar has to consider whether there may possibly be confusion or difficulties when innocent traders use the initials for which registration is claimed. It seems to me that there will be many companies which have names for which the acronym is FSS. With this factor in mind, it follows from the W. and G. du Cros case that very strong evidence would be required to show that these initials have become distinctive by use such that they could properly be registered as a trade mark. That would give the Appellant the exclusive right to use those initials in the class of services for which it claims registration. In my judgment the Appellant has failed to discharge that burden."

The judge dismissed the appeal.

11. The Applicant appeals to this Court. The appeal is coupled with an application to introduce additional evidence - that is to say, evidence which was not before the judge, The nature of that evidence, and the circumstances in which it is said that permission to introduce it at this stage should be allowed, appears from a witness statement signed on 27 September 1999 by Dr Mamdouh Barakat (the founder and managing director of the Applicant company). He states that, upon the transfer of the Applicant's business in 1994 to FNX Limited ("FNX"), a company incorporated in Pennsylvania, the Applicant's physical records (including purchase orders, inquiries, client information and trade correspondence) passed out of its possession; and that although, following a subsequent dispute between the Applicant and FNX, the intellectual property rights which had been transferred in 1994 were re-transferred to the Applicant in 1996, the physical records remained with FNX. Dr Barakat represented the Applicant at the hearing before the Hearing Officer and, as he says:

"The Appellants had no choice but to rely on whatever evidence was already available and in their possession. These included primarily invoices issued by them, trade magazine advertisements, press mentions and press releases. Although these documents formed part of voluminous Court bundles, the Appellants did not have purchase orders, client communications and responses etc., which have now become available to adduce as new evidence".

12. The Applicant was represented by solicitors and counsel on the appeal before Mrs Justice Arden. No application was made to her, under section 18(8) of the 1938 Act or at all, to bring forward for the consideration of the court material which had not been put before the Hearing Officer. The position thereafter is explained by Dr Barakat at paragraph 7 of his witness statement:

"[Mrs Justice Arden's] decision based on the W & G case, which was about a 2 letter mark, as opposed to the Appellants' more distinctive 3 letter mark, placed a much higher burden of proof than it was hitherto believed necessary by the Appellants. There was no choice, therefore, but for the Appellants to obtain the further documents from FNX. I approached FNX and explained the importance and relevance of the documents retained by them. I assured them the documents were needed to demonstrate the Appellants' established use of the name and mark and the Worldwide reputation the Appellants had acquired in the name and the mark. Moreover, sufficient time had elapsed to render the documents of historic importance rather than of use for the practical day to day business of FNX (although the information contained in them would remain commercially sensitive). After consulting their lawyers, FNX finally agreed to allow access to the records."

13. We refused the application to introduce additional evidence in the form of documents obtained from FNX. For my part, I reached that conclusion because I was satisfied that it would not be right to allow the Applicant to introduce on this appeal evidence the existence of which had been known to the Applicant (and which could have been obtained) both at the time of the hearing before the Hearing Officer and at the time of the hearing before the judge. I accept that it may not have been easy for the Applicant to persuade FNX to make the documents available; but I am not persuaded that the efforts which were made to that end after the hearing before the judge (and which proved successful) could not have been made at an earlier stage of these proceedings or would not have proved successful if they had been made at an earlier stage. The position, as it seems to me, is that Dr Barakat thought he could succeed before the Hearing Officer without those documents; his advisers must have taken the same view in relation to the appeal to the judge (no application for an adjournment to enable the Applicant to obtain the documents was made to the judge); and it is only because the Applicant had failed before the Hearing Officer and the judge to establish the registration for which it applied in November 1993 that efforts were made to obtain documents which could have been obtained if those efforts had been made at a much earlier stage. It is in the interests of court users generally that litigation should be conducted efficiently. The proper and efficient conduct of litigation requires that (so far as he can) a party should bring the material upon which he relies before the trial court. To allow a party to bring material before an appellate court which he could have brought before the trial court is likely to prejudice the other party (who has been deprived of the opportunity to address or challenge that material at the trial); to place the appellate court at a disadvantage (because it does not have the benefit of the views of the trial judge upon that material); or to lead to a waste of resources at the expense of litigants generally (because the appellate court may be forced to the conclusion that the only way to deal with the matter fairly as between the parties is to direct a new trial). The present case provides, to my mind, a paradigm example of circumstances in which additional evidence should not be admitted in this Court.
14. The grounds of appeal, set out under sixteen numbered paragraphs in the Applicant's notice of appeal, are, I think, adequately summarised in two sentences in the skeleton argument prepared for use on the application for permission to appeal to this Court (and adopted on the appeal itself). It is said (i) that "the Judge misdirected herself as to the proper approach in law in assessing the 'strength' of evidence required to discharge the Applicant's burden on the issue of distinctiveness, and that she gave little or no weight to the most relevant supporting evidence" and (ii) that "the case is one which involves a review of the extent to which three letter marks should be considered as acceptable and valid trade marks under the provisions of the 1938 Act as amended by the 1994 Act." It is said to be the Applicant's case that the three letters "FSS", when first used and adopted by them (in 1988/1989) were prima facie distinctive, in that they were capable of distinguishing the goods and services of the Applicant. That submission does not appear to have been pursued before the judge (see the passage from page 1, line 32, to page 2, line 20 in her written judgment). But it is now advanced as a ground (under section 10(2)(a) of the 1938 Act) upon which the mark ought to have been held inherently capable of distinguishing the services of the Applicant in addition to the ground (under section 10(2)(b) of the Act) based on use.
15. I do not, myself, think that it is necessary or appropriate to accept the Applicant's invitation to undertake a review of the extent to which three letter marks should be considered as acceptable and valid trade marks under the provisions of the 1938 Act. There is no doubt that the Hearing Officer reached the correct conclusion on the basis of the guidance provided by the Trade Marks Registry Works Manual (1989 revision). I have referred earlier in this judgment to the first sentence of paragraph 9-206 in that Manual. Paragraph 9-210 throws further light on the Registry practice in relation to three letter marks under the 1938 Act:

"These marks [three letter marks] were previously only accepted in Part A if they were either (a) well known dictionary words (CAT, MET, NOD etc) or (b) if they were pronounceable and represented in upper and lower case (Mep, Piv, etc).

Following a change of practice in 1989 three-letter marks, if clearly pronounceable, are acceptable in Part A, whether or not shown in upper and lower case. MEP and PIV would now qualify in Part A, for instance, as would LIF, WAC, FAL, SYL, etc. Totally unpronounceable three-letter marks XTC, ITP, MLK, etc) are not acceptable in Part A or Part B, prima facie. [Emphasis added]

Nor is there doubt that the Registry practice changed following, and in the light of, the enactment of the 1994 Act. The introduction to Chapter 6 of the June 1996 revision of the Works Manual contains the following explanation:

"Under the 1938 Act it was the Registrar's practice not to accept marks which consist simply of a single letter or of two or three letters and are not pronounceable. This was because of the common use of initial letters by traders in general in marketing their goods and for other purposes in trade (see the W & G case (30 RPC 661)). However, when a letter or letters have some additional features added (other than borders or decorative features of a non-distinctive character), so as to create a combined device, then the presence of the letter or letters will not prevent a finding of distinctiveness.

With the introduction of the 1994 Act it is thought we should take the opportunity to rationalise our practice in relation to letter marks and where possible simplify it. . . .

In all cases examiners must bear in mind the fact that in some industries such as those involved with computers, cars etc the use of letters and/or numerals may be commonplace. In such cases the examiner may require evidence of use or trade evidence before he/she can reasonably make a judgment that the mark applied for is capable of distinguishing.

Three letter marks

All three letter marks or three letter words should be accepted prima facie unless they are objectionable in their own right as well known acronyms etc."

Further guidance is given in Practice Amendment Circular 5/00 published in Trade Marks Journal No 6326 on 3 May 2000. In a section headed "Letters and Numerals", there is the following paragraph:

"Section 1(1) of the [1994] Act states that trade marks may consist of letters or numerals. Such signs are not therefore excluded from registration per se. Whether a letter or numeral mark can be registered prima facie will depend upon whether the average consumer of the goods/services at issue would expect all such goods/services offered for sale under the sign to originate from a single undertaking. If the sign does not possess the character necessary to perform this essential function of a trade mark, it is "devoid of any distinctive character."

16. This is not the occasion to consider whether a three letter mark which is not pronounceable can be accepted for registration under the 1994 Act unless, before the date of the application, it has in fact acquired a distinctive character as a result of the use made of it. That depends, I think, on whether (in the absence of distinctive character acquired by use) such a mark can be said to be devoid of any distinctive character – as the passage in the recent Practice Amendment Circular recognises. What can be said, with some confidence, is that such a mark does not fail under section 3(1)(a) of the 1994 Act. That was the conclusion reached by Mr Geoffrey Hobbs QC, hearing the appeal in trade mark application 2028150 as the Appointed Person under section 77 of that Act. I agree with that conclusion, so far as it goes. But Mr Hobbs did not have to consider a ground of opposition under section 3(1)(b) – trade marks which are devoid of any distinctive character – because the application to raise that ground by amendment had been refused by the Hearing Officer. For my part, I would wish to reserve for an appeal in which the point arises whether (in the absence of distinction acquired by use) a three letter mark (or, more accurately, the particular three letter mark then in question) can be said to be devoid of any distinctive character.
17. This is not an appeal in which the provisions in the 1994 Act have any relevance. The question in this appeal is not whether (in the absence of distinctive character acquired by use) the three letter mark 'FSS' is devoid of any distinctive character for the purposes of section 3(1)(b) of the 1994 Act. The question before us (in the present context) is whether the three letter mark is inherently capable of distinguishing the services of one provider from the services of others for the purposes of section 10(2)(a) of the 1938 Act. The Hearing Officer and the judge have reached the conclusion that the mark is not inherently capable of distinguishing the services of one provider from the services of others. They reached that conclusion in the light of the observations made by Lord Shaw and Lord Parker of Waddington in the W. and G. du Cros case (1913) 30 RPC 660. I agree with that conclusion. It is, I think, sufficient to refer to the passage in the judgment of Lord Shaw (at page 669) which I have already set out; and to a passage in the judgment of Lord Parker (with whom Lord Shaw and the other two members of the House, Earl Loreburn and Lord Mersey, agreed) at page 671:

"In my opinion, in order to determine whether a mark is distinctive it must be considered quite apart from the effects of registration. The question, therefore, is whether the mark itself, if used as a Trade Mark, is likely to become actually distinctive of the goods of the person so using it. The applicant for registration in effect says, "I intend to use this mark as a Trade Mark, i.e., for the purpose of distinguishing my goods from the goods of other persons," and the Registrar or the Court has to determine, before the mark be admitted to registration, whether it is of such kind that the applicant, quite apart from the effects of registration, is likely or unlikely to attain the object he has in view. The applicant's chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of Trade Marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire to use. For example, names (unless represented in some special manner) and descriptive words have never been recognised as appropriate for use as Trade Marks. It is true that they became registrable for the first time under the Act of 1905, but only if distinctive, and they cannot be deemed distinctive without an Order of the Board of Trade or the Court. This restriction does not apply to marks consisting of a letter or combination of letters, but before such a mark be accepted the Registrar or the Court has to be satisfied that it is adapted to distinguish the goods of the applicants from those of others. It need not necessarily be so adapted and whether it is or is not so adapted, appears to depend largely on whether other traders are or are not likely to desire in the ordinary course of their business to make use in connection with their goods of the particular letter or letters constituting the mark.

There seems to be no doubt that any individual or firm may legitimately desire in the ordinary course of trade to use a mark consisting of his or their own initials upon, or in connection with, his or their goods. . . ."

18. It is important to keep in mind that the application, in the present case, is for registration of the mark in class 42 in respect of "computer programming services; advisory and consultancy services, all relating to computer programming." It is, as it seems to me, inevitable that there will be companies offering services in that field who wish, for wholly legitimate reasons, to do so under a corporate name which includes one or more of the words "software", "systems" "support" and "services". Further, it is inevitable that there will be companies offering services in that field who wish, again for wholly legitimate reasons (because that is descriptive of the services which they offer) to include the word "Financial" in the corporate name. The Applicant's name is "Financial Systems Software (UK) Limited". No other United Kingdom company can use that name. But there is no reason why other United Kingdom companies - and, a fortiori, overseas companies -should not be incorporated with names which include the words "Financial Software Systems" "Financial Software Services","Financial Systems Support", Financial Support Services". It is not difficult to envisage other combinations. Any of those names could be descriptive of the activity in which the company was engaged; and any of those names could, without improper motive, be abbreviated in common use to the initials "FSS". The answer to the question posed by Lord Parker in the W. and G du Cros case - "would other traders be likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own services" - must be that they would. It is necessary to remember that the question has to be answered on the basis that the applicant does not have trade mark protection for the mark.
19. I turn, therefore, to the other issue raised by the appeal: that the judge misdirected herself as to the proper approach in law in assessing the 'strength' of evidence required to discharge the Applicant's burden on the issue of distinctiveness and gave little or no weight to the most relevant supporting evidence. The question for the judge, under section 10(2)(b) of the 1938 Act, was whether, by reason of the use of the mark or of any other circumstances, the mark had become capable of distinguishing the services provided by the Applicant from services provided by others. It has not been suggested that, in the present case, there are any circumstances other than use which could lead to the conclusion that the mark had acquired the capacity to distinguish.
20. In the context of section 10(2)(b) of the 1938 Act, the relevant use, as it seems to me, is use as a trade or service mark. A mark is used as a trade or service mark where it is used in relation to goods or services for the purpose of indicating, or so as to indicate, a connection in the course of trade or business between those goods or services and some person having the right to use the mark – see section 68 of the 1938 Act. The judge asked herself (at page 5, lines 30-31, in her written judgment) whether there was evidence from which the conclusion could be drawn that the initials "FSS" were being used other than as an abbreviation for the Applicant's name. In other words: were the initials being used only as an abbreviation of the Applicant's name, or were the words being used to distinguish the services which the Applicant had supplied (or was offering) from the services supplied (or offered) by others carrying on business in the same field? In my view that was a correct test in the circumstances of the present case. That is not to say that initials which are used as an abbreviation of the Applicant's name cannot also be used to distinguish the services supplied by the Applicant from the services supplied by others; the question is whether initials that are being used for the former purpose are being used for that purpose alone.
21. The judge upheld the finding by the Hearing Officer that there was no sufficient evidence that the initials "FSS" had been used by the Applicant as a service mark. In the passage on page 5 of her written judgment to which I have referred earlier she held that there was virtually no evidence from which the conclusion could be drawn that the initials FSS were being used other than as an abbreviation for the Applicant's name. As she put it: "Any other use was insignificant."
22. We have, properly, been taken through the material which was in evidence before the judge. It is unnecessary to refer to all of it in detail. In my view the Hearing Officer and the judge were entitled to reach the conclusion which they did; namely, that, in almost all cases where the initials "FSS" are used, the use is as a convenient way to refer to the Applicant. A number of obvious examples can be found in the "News Letter" issued by the Applicant in Summer 1989. A Mr Alfred Strebel is described as "the charismatic chairman of Financial Systems Software (FSS)." His experience in financial markets is said to have been "essential to the success of FSS." There is a section headed "FSS IS MOVING"; in which it is disclosed that "FSS will move office" to a new address. The final paragraph begins with the sentence: "Financial Systems Software (FSS) is a subsidiary of Cheffick Limited; Cheffick (described as an international property, investment and consultancy group) is said to provide "the financial and expertise base which will ensure the long term success of FSS." Further material includes a number of advertisements or brochures with the message "FSS has an ideal solution for you". A 1993 price list sent out under the Applicant's full name "Financial Systems Software (UK) Limited" make no reference at all to an "FSS" product or service. The contention that the Applicant was establishing by trade mark use a distinctive connection with "FSS" services is simply not made out in the material which was before the judge.
23. It was submitted on behalf of the Applicant that the difficulty to which I have referred – namely, that there was virtually no evidence to support a finding that that the letters "FSS" had become distinctive though use of "computer programming services; advisory and consultancy services, all relating to computer programming" supplied or provided by the Applicant – could be overcome by imposing some limitation on the classification sought (see section 17(2) of the 1938 Act). When pressed in the course of argument to formulate a limitation for the Court to consider, counsel suggested the inclusion of the words "but excluding financial services". For my part, I find it difficult to understand how it can seriously be contended that the letters "FSS" – which are, after all, the initial letters of the words "Financial Systems Software" in the Applicant's name – could have become distinctive by use of programming, advisory and consultancy services (but excluding financial services) supplied or provided by the Applicant. Whatever else the evidence may or may not establish, it does establish that the business in which the Applicant was engaged was the provision of programming services for use by those engaged in the financial services sector. The submission becomes the more difficult to understand when it is appreciated that, in trade mark application No 2028150 – to which I am about to refer - the Applicant sought registration of the mark in class 36 for use in relation to "consulting services in the field of financial services". In fairness to counsel I should observe that the suggested limitation was urged upon the Court without any apparent enthusiasm. I do not think I need say more about it.
24. I should emphasise that the question for the Hearing Officer, and for the judge, was whether the condition for registration in Part B of the register, prescribed by section 10 of the 1938 Act, was satisfied as at the application date in November 1993. It is important to keep that in mind when addressing the submission made to us that we should follow the decision of Mr Hobbs QC in trade mark application No 2028150 - to which I have referred.
25. Trade mark application No 2028150 was an application, made on 25 July 1995, by FNX to register "FSS" as a trade mark, in class 9, for use in relation to "personal computers and computer software for use in the field of financial services", and in class 36 for use in relation to "consulting services in the field of financial services". The application was opposed by Financial Software Systems Inc, the Opponent in the present proceedings. In 1996, following (or as part of) the re-transfer of intellectual property rights from FNX to Financial Systems Software (UK) Ltd, the Applicant in the present proceedings, the application for registration originally made by FNX was assigned to the Applicant. Thereafter trade mark application No 2028150 was carried on between the parties to these proceedings and, in effect, in parallel with these proceedings. The 1995 application succeeded in respect of class 9, but failed in respect of class 36. Both the Applicant and the Opponent appealed. The appeals were heard by Mr Hobbs QC as the Appointed Person. He dismissed both appeals.
26. In upholding the decision of the Hearing Officer in trade mark application No 2028150 to allow registration in respect of class 9 Mr Hobbs QC said this, at page 51 of his written judgment:

"My own reading of the evidence given on behalf of the Applicant satisfies me that the Applicant can fairly be taken to have used the mark FSS as a trade mark continuously since 1989 in the course of carrying on business, with fluctuating degrees of commercial exposure and success, as a supplier of Class 9 goods of the kind specified in the application in suit."

But that may be set in the context of a finding by the Hearing Officer in that application, at paragraph 68 of his decision, that:

"It is certainly true to say that the applicant's use of the letters FSS as a trademark is thin – wafer thin in 1992 and 1993 – but there are examples . . . which probably constitute trade mark use prior to the relevant date."

It is, I think, impossible to say what conclusion the Hearing Officer and the Appointed Person would have reached in trade mark application No 2028150, on the evidence before them, if the relevant date had been November 1993 (as it is in the present proceedings) instead of July 1995; nor what conclusion they would have reached if they had been considering an application to register the mark in respect of services under class 42 instead of in respect of goods under class 9.

27. It is not clear to me whether Mr Hobbs QC was aware, when he began the hearing of the appeal in trade mark application 2028150, that the judgment of Mrs Justice Arden was under appeal to this Court. If either party to that application, or the Registrar, had requested him to do so – or if he had, himself, thought that there was a point of general legal importance involved - he could have referred the appeal to the High Court. That did not happen. There may have been good reasons for that; but we have not been told what those reasons were. In the result the decision of Mr Hobbs QC is final – see section 76(4) of the 1994 Act. There is no appeal to this Court from that decision; and it is important that the outcome of the present appeal should not be seen as casting doubt on that decision. Whether or not that decision was correct is not a matter which we need to decide; and I express no view about it.
28. It is unfortunate, however, that litigation between these two parties has been conducted in such a way that there is potential for a perception that the decision of Mrs Justice Arden in the present proceedings is inconsistent with the decision of Mr Hobbs QC on trade mark application No 2028150. The advantage of a reference to the court in trade mark application No 2028150 would have been that there would or might then have been the opportunity for this Court to consider together the appeal from Mrs Justice Arden in the present proceedings and any appeal from the High Court in the proceedings arising from trade mark application No 2028150. But it has not been open to this Court to consider the two applications together; and so to ensure that the outcome of the one was seen to be consistent with the outcome of the other.
29. Nevertheless, on a proper analysis, there is no necessary inconsistency if the Applicant succeeds in its application to register FSS as a trade mark in class 9; but fails in its application to register the mark as a service mark in class 42. The two applications have been decided on evidence which is specific to each. Although, no doubt, there has been much evidence which is common to both applications, the evidence is not the same. The relevant date for the purposes of application No 2028150 is some 20 months later than the relevant date for the purposes of the present proceedings. The present application is an application to register the mark in respect of services under class 42; application No 2028510 was an application to register the mark in respect of goods under class 9. The present is an application under the 1938 Act; application No 2028510 was an application to register under the 1994 Act. There is no reason in principle why the outcome of the two applications should necessarily be the same. It would not be correct to conclude that, if they are not, one must be wrong.
30. For the reasons which I have set out, I would dismiss this appeal.

LORD JUSTICE KEENE:

31. I agree.

LORD JUSTICE PETER GIBSON:

32. I also agree.
ORDER:
33. Appeal dismissed.
34. Appellant to pay respondent's costs of appeal to be subject to detailed assessment.
35. Appellant to make interim payment of costs to respondent in the sum £12,000 to be paid within 28 days.
(Order does not form part of approved Judgment)