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15 May 2018Trademarks

Cryptocurrency at centre of trademark infringement claim

UK-based instant messaging service Telegram Messenger has filed a claim for trademark infringement against US-based blockchain company Lantah.

The claim was filed at the US District Court for the Northern District of California San Francisco Division on Friday, May 11.

Telegram Group was founded in 2013 with the goal of developing online products and services using encrypted technology. Its first project was its messaging application designed to focus on speed and security. According to the claim, the Telegram Messenger App had 200 million monthly users worldwide in early 2018.

The Telegram Group owns the service trademark ‘Gram’, which is used in connection with its financial products and services relating to cryptocurrency.

According to Lantah’s website, the company’s purpose is to “revolutionise commerce by introducing the power of blockchain” by providing a platform for cryptocurrencies.

Blockchain processes present a number of limitations in preventing cryptocurrencies from being widely adopted, the most notable of which is that blockchains are not fully scalable, resulting in slow transaction speeds as the network grows, the Telegram Group said.

Subsequently, cryptocurrencies built on these platforms cannot be used as a replacement for currencies or credit cards, said Telegram Group.

To simplify the process, Telegram Messenger developed the Telegram Open Network in 2017 to produce a fully scalable blockchain able to support robust cryptocurrencies. The company has used the mark ‘Gram’ in association with this network.

According to the claim, Lantah filed an intent-to-use trademark application at the US Patent and Trademark Office covering the word ‘Gram’.

The trademark Lantah intends to use relates to “financial services, namely, providing a virtual currency for use by members of an online community via a global computer network”.

In March 2018, Lantah initiated a “so-called initial coin offering” service using the ‘Gram’ mark.

“Lantah’s use of ‘Gram’ for a cryptocurrency will inevitably cause a likelihood of consumer confusion, harm the goodwill in Telegram’s service mark, and cause confusion as to the source, origin, and/or sponsorship of Telegram’s cryptocurrency services,” said the claim.

Furthermore, it said that it will probably cause further confusion among consumers about which company’s cryptocurrency is being used in any particular transaction.

The Telegram Group is seeking an injunction against Lantah as well as damages.

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26 January 2018   Hogan Lovells yesterday published its second Global IP Outlook report, summarising the IP landscape and predicting the rise of disruptive technologies in 2018.