GAIN Capital UK Limited v Citigroup Inc (No 4)  FCA 519 (16 May 2017)
Successful appeal by Gain Capital against the Registrar’s decision refusing trademark registration of its CITYINDEX (Stylised) and IFX A City Index company Logo shown below filed on 9 November 2010 for financial services in class 36. The Registrar’s decision upholding Citigroup’s opposition is reported here
Gain Capital’s appeal was limited to registration of these two trade marks for “financial services, being trading services for retail, over the counter derivatives provided through a user online software program or provided electronically or via other communicative means” in class 36. Its CITYINDEX trade mark had been used in Australia since early 2007 and its IFX Logo trade mark had been used in Australia since late October 2010.
Citigroup is a global financial services giant within Australian presence since the 1960s and has held a banking license since 1985. Its two main divisions are directed to institutional corporate clients and consumer banking. The Australian business has undergone various name changes over the years but, since 1978, each version of its name has included the prefix “Citi”. It also formed Citigroup Index LLC in July 2003 to distribute index data to institutional customers globally.
Markovic J reviewed lines of authority on the standard of proof and concluded it was appropriate to determine this on the balance of probabilities and not on the higher standard that a mark should clearly not be registered.
Under the s44 ground of opposition, Citigroup relied on its various trade mark registrations containing or consisting of CITI. It was not in dispute that these registrations covered similar services, so the issue was whether Gain Capital’s CITYINDEX and/or IFX Logo trade marks were deceptively similar to any of Citigroup’s registered marks. Her Honour considered they were not deceptively similar and observed “if the Court were to make a finding in favour of Citigroup there is a real danger that it would, in effect, be granting a monopoly to it over the use of the common word “city” as a prefix or in combination with other words in relation to financial services”.
Under the s60 ground, Citigroup relied on the Australian reputation of its various CITI-prefix marks. Gain Capital accepted that the stylised Citi mark had a considerable reputation. It contested the reputation of the plain word Citi, but Markovic J was satisfied that Citigroup’s evidence established a significant reputation in this plain word. Indeed, her Honour accepted that use of the stylised Citi mark is use of the plain word Citi. However, her Honour did not accept that use of Citi with a suffix is use of the Citi word mark. Markovic J found that each of Citigroup’s stylised Citi mark, plain word Citi mark and Citibank mark had acquired an Australian reputation in financial services, but was not satisfied Citigroup had established an Australian reputation in its CITIFX or CITI INSTANTFX marks. Significantly, her Honour noted that Citigroup did not offer services of the kind provided by Gain Capital and its reputation did not extend to these rather unique services. Citigroup’s investment products were exchange traded and not derivatives. They did not carry the higher risk profile of over the counter, non-exchange traded derivatives of the kind provided by Gain Capital. Given this and the differences in the respective marks, Markovic J concluded that there would not be a likelihood of deception or confusion.
Citigroup also relied on s59 and argued that Gain Capital lacked the intention to use its applied for trade marks for all the designated services, rather its intention was confined to CFDs and margin foreign exchange. Further, the reference to “trading services’ was unclear. However, Markovic J quickly dismissed this ground of opposition.