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9 March 2018Trademarks

Show me the money: EU General Court overrules currency TM decision

The EU General Court has annulled the European Union Intellectual Property Office’s (EUIPO) refusal of a trademark registration covering currency.

The trademark was filed by Poland-based Cinkciarz.pl, an online currency exchange platform, in 2015.

Cinkciarz.pl applied for a figurative mark consisting of a white circle overlapping a black circle. The white circle encompasses a black euro symbol (€) and has a black border, while a white US dollar sign ($) is situated in the middle of the black circle.

The goods and services under the applied-for trademark fall under classes 9, 36 and 41, covering software, financial services—including foreign exchange—and publications.

In April 2017, the EUIPO denied the application on grounds that it was devoid of distinctive character and that it featured units of currency.

The Fifth Board of Appeal dismissed an appeal in July 2016, claiming that the currency symbols in the trademark are descriptive and lack distinctive character.

Cinkciarz.pl appealed against the decision to the General Court, arguing that the board did not sufficiently examine the descriptive nature of the signs in the trademark in relation to each of the goods and services covered by it.

The General Court said that, as the goods and services covered by the trademark do not have a sufficient direct and specific relationship to one another, grounds for refusal must relate to each of the goods or services for which the registration is made.

In its decision, the court also said that the EUIPO examined the descriptive character of the trademark without referring to each of the goods and services covered by it, and instead adopted general reasoning.

The court highlighted that the applied-for trademark covers more than 80 goods and services and falls into three different classes. It ruled that the EUIPO was wrong to claim that all the goods and services covered by the trademark were related to foreign exchange transactions. Therefore, the EUIPO’s reasoning for dismissing the application is not relevant.

The General Court said it was necessary for the Board of Appeal to provide additional reasoning for the goods and services not characterised by a link with foreign exchange transactions in order to explain why the applied-for mark was rejected.

“Since the contested decision does not contain such additional reasoning, it must be held that there is no statement of reasons.”

The General Court said that, even if the goods and services did relate to foreign exchange transaction, the Board of Appeal was not clear in its decision when it said the trademark allowed the relevant public to immediately perceive a description of all goods and services.

In its conclusion, the court said the EUIPO’s decision must be annulled in its entirety and ordered it to pay all costs.

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