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The Cancellation Division of the EUIPO has recently declared the following two logo marks of
Mastercard International Incorporated (MasterCard) invalid:
Cancellation actions against these registrations were brought by Cinkciarz.pl Sp. z o.o., a Polish company offering online currency exchange services. Cinkciarz uses a logo depicting two interlocking circles – a black one and a white one – with the euro and dollar currency symbols in the centre:
Chikciarz argued that MasterCard’s marks are too banal and simple to be protected, and are therefore devoid of any distinctive character and should be kept free for other traders to use.
To defend its rights MasterCard submitted a large volume of evidence in support of the argument that the marks are inherently distinctive and otherwise have acquired a distinctive character as a result of their use in the marketplace, therefore the marks should remain registered.
The company showed extensive figures relating to their market share, turnover and advertising expenditure. Moreover, the supporting evidence covered almost every country of the European Union and beyond. MasterCard illustrated its use of several different variations of their logo, particularly its well-known overlapping red and yellow circles.
Unfortunately for MasterCard, the EUIPO was not convinced by the evidence and found that it did not support the use of the marks as represented in either of the registrations in question. In fact, most of the provided examples of the use were considered to be irrelevant, or possibly even detrimental to the ultimate outcome of the case in this instance, as they referred to MasterCard’s other marks.
MasterCard tried to rely on the famous Specsavers judgment, where CJEU decided that the average consumer could perceive the wordless logo as an indicator of origin when the use of the logo in conjunction with a word element did not affect the distinctive character of the wordless logo mark (Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2014] EWCA Civ 1294):
However, in the present scenario the EUIPO distinguished the facts from those of the Specsavers case holding that the evidence filed related to other MasterCard trade marks, of which the overlapping circles as registered will be merely seen as a component. According to the Cancellation Division the examples provided to by MasterCard stood too far from the representation of the trade marks on the register.
It should be borne in mind that a famous name, large revenue figures and piles of supporting evidence would not automatically guarantee a successful outcome when it comes to demonstrating genuine trade mark use. This EUIPO decision is an important reminder that the registrations aimed at a wider scope of protection for different variations of your brand may not always provide you with sufficient coverage. On the contrary, such marks can sometimes be especially vulnerable if these significantly deviate from the way your brand is actually being used in the course of trade.
If you’d like to discuss this topic you can contact the writer, or another member of the trade mark team.
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