Forex Bank loses bid to keep TM before General Court
The EU General Court has dismissed Sweden-based Forex Bank’s attempt to retain its ‘Forex’ trademark for certain goods, including bank and debit cards.
In a decision issued yesterday, December 2, the General Court concluded that the mark ‘Forex’ was descriptive of the goods at issue and therefore partly invalid.
Forex had applied to register its ‘Forex’ mark in 2006, for goods and services in classes 6, 9, 16 and 36. Goods covered by the mark include security equipment in the form of apparatus and instruments for safe-keeping of money, bank and debit cards, printed publications and pawn brokerage.
The trademark was registered in May 2010 and renewed five years later. However, the following year, Coino UK filed an application for a declaration that the disputed mark was invalid, in respect of all the goods and services covered.
A European Union Intellectual Property Office (EUIPO) Cancellation Division decision in October 2018 granted the application in respect of certain goods in classes 9 and 16 (including bank and debit cards, and apparatus for money exchange and currency exchange) and declared the disputed mark to be partially invalid.
Forex appealed against the decision, but the Second Board of Appeal of the EUIPO dismissed the appeal. Again, Forex appealed, but yesterday, the General Court dismissed the action.
The Swedish bank alleged that the appeal board had erred in three ways: its assessment of the level of attention of the relevant public, its assessment of the meaning of the term ‘forex’ and in finding that the disputed mark was descriptive of the goods at issue in classes 9 and 16.
While Forex didn’t dispute that the goods at issue target professionals and the general public, it claimed that the level of attention of the relevant public in the field of financial services is generally high. The appeal board had concluded that the level was average.
“In that regard, it must be stated that the goods at issue do not include services,” said the General Court. “Therefore, the applicant’s argument that the level of attention of the relevant public in relation to financial services is generally high is irrelevant.”
Second, Forex claimed that while the term ‘forex’ is an abbreviation of ‘foreign exchange market; foreign exchange’, this is only understood by professionals and is not widely known by the general public.
The court stated that Forex had not provided any evidence capable of establishing that only a “neglible part of the public” understands the term ‘forex’ to be an abbreviation.
Finally, the court dismissed Forex’s claim that none of the goods at issue in class 9 relates to the ‘foreign exchange’ market.
“In the present case, it must be held that the Board of Appeal was right in finding, in paragraph 33 of the contested decision, that the sign Forex indicated to consumers that the goods at issue in class 9 were related to the cashing and transfer of currency and that those goods were specific enough to cover goods used for foreign exchange,” said the court.
It also affirmed that appeal board’s finding that disputed mark was descriptive for the relevant public of the subject matter and intended purpose of the goods at issue in class 16.
The action was dismissed and Forex was ordered to pay costs.
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