Decision Nº O/096/22 from Intellectual Property Office - (Trade market), 4 February 2022

JudgeCharlotte Champion
Date04 February 2022
Registration NumberUK00003548394
Administrative Decision NumberO/096/22
O-096-22
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. 3548394
AND THE REQUEST BY CORNERSTONE FS PLC
TO REGISTER THE TRADE MARK
CORNERSTONE
IN CLASSES 9, 35, 36 AND 42
AND
IN THE MATTER OF OPPOSITION THERETO UNDER NO. 600001698
BY CORNERSTONE FX LTD
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Background and pleadings
1. On 26 October 2020 Cornerstone FS PLC (“the Applicant”) applied to register the
plain text word “CORNERSTONE” (“the contested mark”) as a UK trade mark.
Following restrictions to the goods and services applied for under the mark,
registration is sought in respect of the following goods and services:
Class 9: Mobile application software relating to financial management and
account management, for use with smartphones, tablet computers and laptop
computers; computer programs for use in financial management, account
management; computer software for use in accessing, tracking, managing,
analysing, downloading and dashboard reporting of financial information and
investments; software platform to enable users to make financial transactions;
computer software for accessing and managing financial and investment
portfolios; computer software for accessing and managing accountancy
information; all of the aforesaid in relation to financial management and services;
all the aforesaid excluding goods relating to talent acquisition and talent
management systems, training and learning facilities in order to optimise
workplaces for employees and employers, business consulting services in
relation to financial matters for employees and training of employees in the field
of accounting, finance and management.
Class 35: Business organisation, business advice; business management
advice; business advisory services; accounting services; business management
services relating to financial management; advertising services relating to
financial investment; financial marketing; business data analysis; data processing
and data verification services; updating of information on a computer database;
distribution of printed advertising materials; personnel management consultancy
and administration services; all of the aforesaid in relation to financial
management and services; all of the aforesaid excluding services relating to
talent acquisition and talent management systems, training and learning facilities
in order to optimise workplaces for employees and employers, business
consulting services in relation to financial matters for employees and training of
employees in the field of accounting, finance and management.
Page 3 of 32
Class 36: Financial services; financial management; asset and fund
management; investment services; capital investment; financial advisory and
consultancy services; financial analysis and research services, financial
forecasting; financing and funding services; monetary affairs, financial
investment, capital investment, private equity investment, infrastructure
investment, financial portfolio management; life assurance services; pension
services, pension fund administration and management, mortgaging, banking,
trustee services, nominee services, brokers and agents for bonds and other
securities; funds transfer services, financial advisory and consultancy services,
financial analysis and research services, financial forecasting, financial planning
and financing services for securing funds, investment management and
consultation, financial consultation pertaining to wealth management; financial
management consultancy and administration services; advice, information and
consultancy relating to all the aforementioned services; wealth management and
investment management; all of the aforesaid in relation to financial management
and services; all of the aforesaid excluding services relating to talent acquisition
and talent management systems, training and learning facilities in order to
optimise workplaces for employees and employers, business consulting services
in relation to financial matters for employees and training of employees in the field
of accounting, finance and management.
Class 42: Providing a platform for initiating and handling financial investments;
providing a customer portal for the management of financial information;
providing temporary on-line use of downloadable computer software for
accessing, tracking, managing, analysing, downloading and dashboard reporting
of financial information and investments; providing a website featuring non-
downloadable software for use in database management, compiling and tracking
information and data; providing a website featuring non-downloadable software
for presenting a user dashboard of custom information; Designing of printed
advertising materials'; all of the aforesaid in relation to financial management and
services; all of the aforesaid excluding services relating to talent acquisition and
talent management systems, training and learning facilities in order to optimise
workplaces for employees and employers, business consulting services in
relation to financial matters for employees and training of employees in the field
of accounting, finance and management.

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