16 December 2020TrademarksRory O'Neill

BNP Paribas wins UK rights to ‘Cpay’ fintech brand

French banking group BNP Paribas has prevailed in a UK trademark dispute with fintech start-up Cryptopay over the rights to the ‘Cpay’ brand.

In December 2018, BNP filed to register three logos for ‘Cpay’, a top-up based debit and credit card for use in Europe and the UK. The following month, Cryptopay filed to protect ‘C.Pay’—a card which allows users to use Bitcoin to pay in local currencies around the world.

Both companies opposed each other’s applications, claiming they had prior rights to use the brand. In a combined decision dealing with all of the proceedings, the UK Intellectual Property Office (IPO) cleared BNP’s marks for registration and refused Cryptopay’s.

According to the IPO, Cryptopay failed to substantiate its argument that it had built up significant goodwill in the UK for the ‘C.Pay’ brand. Cryptopay had cited a 2017 initial coin offering (ICO) to finance its expansion as evidence of the goodwill.

But the IPO examiner noted: “The ICO’s availability was restricted in the UK to self-certified sophisticated investors only. I have no evidence or submissions to explain what this means; and of the $6 million worth of investments, there is no evidence as to whether these consumers were in the UK.” The IPO also rejected other evidence including marketing expenditure, as it was not clear that it was targeted at the UK.

The IPO rejected Cryptopay’s opposition on this basis, before examining BNP’s action and again ruling in the French bank’s favour.

According to the IPO examiner, the average consumer was likely to mistake Cryptopay’s mark for BNP’s, with there being a likelihood of both direct and indirect confusion.

“I have found that the goods and services range from being identical to being similar to a medium degree,” the examiner wrote, adding: “The colour/stylisation is likely to be seen as different presentation being used by the same or economically linked undertakings.”

The decision means BNP’s marks can proceed to registration in the UK, while Cryptopay must pay £1,400 towards BNP’s legal costs.

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