American CFA Institute loses its "Chartered Financial Analyst" in UK

Association for Investment Management and Research (AIMR), now named as CFA Institute of Charlottesville, Virginia, U. S. A has been refused registration of collective trademark "Chartered Financial Analyst" in Class 36 in UK.

Under International Classification of goods and services for trademarks, Class 36 is applicable to services in Insurance; Financial affairs; monetary affairs; real estate affairs. Also in this class are building society services; banking (including home banking); stock broking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information. Does not include accountancy, which is in Class 35. A collective trademark is indicative of membership of an organization which is involved in offering services in the corresponding class. Hence going by this decision the members of AIMR (now CFA Institute) will not be able use the designation "Chartered Financial Analyst" in UK.

The Chartered Insurance Institute had earlier filed notice of opposition to the proposed registration. The grounds of opposition are, in summary, that:

i. registration of the mark would be contrary to section 3(3)(b) of the Act because use of the mark would be liable to deceive and cause a substantial proportion of the relevant the public to believe that the persons using the mark were approved or regulated by a professional body established by Royal Charter and/or had been approved and regulated by the opponent;

ii. for the same reason, and because use of the term "chartered" in the UK is restricted under the Business Names Regulations, registration would be contrary to public policy and therefore prohibited by section 3(3)(a) of the Act;

iii. use of the mark would lead the public to believe that the applicant has Royal endorsement and registration of the mark would therefore be contrary to section 4(1)(d) of the Act;

iv. the application was made in bad faith

The trademark authority concluded that the opposition filed by the Chartered Insurance Institute for registration of collective trademark "Chartered Financial Analyst" in Class 36, has succeeded u s.3(3)(b) , thus refusing the registration of collective trademark "Chartered Financial Analyst" under class 36 to AIMR (CFA Institute).

This is a major global set back to the claim AIMR (CFA Institute) has been making on its exclusive rights to trademark for the words "Chartered Financial Analyst" especially under class 36. It may be also interesting to note that the trademark applications by AIMR (CFA Institute) under class 36 for the use of words Chartered Financial Analyst are still pending in several other countries prominent amongst them in Asia are Singapore, Hong Kong, Australia and India.

In the light of this decision in the UK it is to be seen whether these countries especially those belonging to the group of Commonwealth Nations will now, ever consider registering the trademark of AIMR (CFA Institute) for use of words "Chartered Financial Analyst" under class 36 which is a relevant class. Even in Canada the AIMR (CFA Institute) does not hold exclusive rights to the words "Chartered Financial Analyst".

There are several trademarks like Chartered Accountant, Chartered Banker, Chartered Chemist, and Chartered Insurance Broker, Chartered Management Consultant etc., registered as collective marks in the relevant class of trademarks by Institutes which have the Royal Charter or approval by the government or as a University. AIMR (CFA Institute) is only a private organization that does not have any approval in USA; neither from the State of Virginia nor at the Federal level. It is neither a University, nor accredited by any well-known accreditation body in USA.