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29 May 2020TrademarksSarah Morgan

EU court annuls Mastercard TM decisions

The EU General Court has annulled a series of trademark decisions which handed victory to  Mastercard, after finding the European Union Intellectual Property Office (EUIPO) had erred in its decisions.

Yesterday, May 28, the court  annulled a number of decisions, siding with online currency exchange service  Cinkciarz.pl.

In 2016, Cinkciarz.pl filed 12 applications for registration of EU trademarks, including applications for ‘currencymachineassistant’ and ‘robodealer’. The marks cover classes 9 and 36 and, depending on the application, 41 or 45.

Each of the trademarks also feature a logo consisting of two connected circles, with one circle featuring the euro sign and the other featuring a different drawing, such as the word ‘AI’ or a dollar sign.

Later that same year, Mastercard opposed all 12 marks, citing its own seven EU trademarks and one UK trademark in opposition. In response, Cinkciarz.pl filed applications for a declaration of invalidity in respect of two of Mastercard’s marks, which feature intertwining circles and black and white circles.

In 2018, the EUIPO’s Opposition Division rejected Mastercard’s oppositions.

Mastercard’s subsequent appeals against the decisions were upheld by the EUIPO’s Second Board of Appeal later that year, with the appeal board finding that the Opposition Division had erred in failing to define the relevant public.

The appeal board returned the decisions to the Opposition Division, recommending in 11 decisions that the division should suspend the proceedings until a legally binding decision regarding the validity of Mastercard’s trademarks was issued. In the other decision, the board “invited” the Opposition Division to take into account the pending invalidity proceedings.

Cinkciarz.pl appealed against the Second Board of Appeal’s decisions, and yesterday, the General Court sided with the company.

The online currency exchange service argued that the Board of Appeal had failed to suspend the appeal proceedings when it should have found that it was appropriate to do so, because of the ongoing parallel proceedings.

In addition to the invalidity proceedings related to Mastercard’s trademarks, proceedings relating to Cinkciarz.pl’s attempt to register a purely figurative mark with ‘€’ and ‘$’ in separate circles were also taking place.

First, the General Court said that even if the outcome of parallel proceedings is liable to have an impact on appeal proceedings, it is not a sufficient basis for “categorising the fact that the Board of Appeal refrained from suspending the proceedings as a manifest error”.

However, said the court, in this case, the Board of Appeal, “after setting out the grounds militating in favour of suspending the appeal proceedings, implicitly decided not to suspend them” and instead examined whether the appeals before it were well founded, before referring the cases back to the Opposition Division.

As the appeal board had found it was appropriate to suspend the proceedings, it should not have ruled on the appeals and subsequently made recommendations to the Opposition Division, “since any referral of the cases to the latter would mean examining the appeals and would therefore stem from an error of law”.

The court ordered the EUIPO to pay its own costs and Cinkciarz.pl’s costs, while Mastercard was ordered to pay its own costs in the proceedings.

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