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15 May 2018Trademarks

CJEU partly affirms ‘mycard2go’ trademark defeat

The Court of Justice of the European Union (CJEU) has affirmed two European Union Intellectual Property Office (EUIPO) decisions and annulled another in relation to a financial service provider’s ‘mycard2go’ trademarks.

Today, May 15, the CJEU’s Fourth Chamber delivered three judgments in relation to three marks (available here, here, and here), upholding the EUIPO’s reasoning in each case, but annulling one of the decisions because the EUIPO had failed to sufficiently explain its reasoning.

In 2015, internet technology and financial services provider Wirecard applied to register three marks with the EUIPO.

The marks, which included a word mark and two figurative marks, all featured the phrase ‘mycard2go’, and covered goods and services related to financial and payment technology in classes 9, 35, 36, 38, 41, 42, and 45.

In February 2016, an examiner rejected all three applications after finding that the marks consisted of purely descriptive elements, which convey a clear and unambiguous message about the goods and services covered to the English-speaking public.

The Fourth Board of Appeal affirmed the examiner’s decisions in October 2016. It noted that the mark would be understood as meaning ‘my card to go’ or ‘my take-away card’, which describes the services covered.

Wirecard appealed against the decisions. It argued that some financial services, such as credit card services in class 36, are aimed towards those with a high level of attention because matters of “a certain economic importance” demand more attention.

In addition, Wirecard disputed the existence of a link between the applied-for marks and the services covered, as well as the board’s determination that the marks lacked distinctive character.

Wirecard claimed that some goods and services, such as payment apparatus, are “unrelated to a card”, and the EUIPO had failed to provide reasons for finding the link between the mark and these goods.

In each decision, the CJEU said the board had failed to take account of the higher level of attention the public has in relation to financial services. However, the CJEU said that Wirecard had failed to show how that fact could have a “decisive influence” on the board’s findings.

The CJEU confirmed that a mark must have a “sufficiently direct and concrete” link which enables the public to perceive “a description of the goods and services in question or of one of their characteristics”.

In the circumstances, “the higher level of attention of the relevant public” means that the “descriptive connotations of the mark applied for” would be easily grasped, the court said.

The court dismissed Wirecard’s argument that the marks consist of a “whimsical and surprising word game” with “no clear meaning”, instead finding that the combination of “common and understandable” words in the applied-for marks will be understood as meaning ‘my card to go’.

However, in relation to the ‘mycard2go’ word mark, the CJEU agreed with Wirecard’s contention that the EUIPO had failed to provide an “analysis of the existence of a sufficiently direct and concrete relationship” between the marks and good and services covered, or a lack of distinctive character.

The board had failed to “respect the obligation to state reasons” for such a finding, the CJEU said, annulling the EUIPO’s decision.

In respect of the two figurative marks, the CJEU said the board had sufficiently explained the reasons for the direct and concrete link between the marks and the services covered, and the board’s decisions were correct.

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