EU General Court rules on Coinbase trade mark dispute

In Case T-126/22, the General Court of the European Union examined a trade mark dispute concerning an application for the EU word mark 'coinbase' and the earlier registered trade marks of Coinbase Inc, a well-known company in the cryptocurrency world.

In July 2019, Coinbase Global OÜ applied to the EUIPO to register the EU word mark Nº 018090762 'coinbase', covering services in Classes 36 and 41 of the Nice Classification, including financial and banking services, online publishing, education and entertainment.

However, Coinbase Inc, based in California, filed an opposition based on a likelihood of confusion with its earlier international word mark No. 1216587 'COINBASE', covering goods and services in Classes 9, 36 and 42, and its earlier EU figurative mark No. 1268814 'coinbase exchange', covering goods and services in Classes 36 and 42, both marks related to the provision of a financial exchange for trading virtual currencies.

In the first instance, the Opposition Division of the EUIPO partially upheld the opposition, but only in respect of the services in Class 36 covered by the mark applied for, and not for those in Class 41, on the ground that the services included in Class 41 were of a different nature: while the earlier trade marks covered services in this class which focused on trading and digital currency software, the trade mark applied for covered translation and interpretation services, education and entertainment. Coinbase Inc appealed against this decision, but again the Fourth Board of Appeal of the EUIPO dismissed the appeal.

The General Court of the European Union had to determine whether there was a likelihood of confusion between the trade mark applied for, 'coinbase', and Coinbase Inc's earlier trade marks, and whether the services designated by the trade marks were sufficiently similar to justify refusal of the trade mark application.

The Court stressed the need for a detailed analysis of the services offered under each trade mark, given the fact the two signs were identical. It found that the services listed in the trade mark application in Class 41 in Coinbase Global OÜ, such as translation and interpreting services, were different from the goods and services covered by Coinbase Inc.'s earlier trade marks, which related to software programmes and software supply services for financial transactions, virtual currencies and fund management. Therefore, the General Court upheld the EUIPO's decision to dismiss the appeal brought by the US company Coinbase on the grounds that there was no likelihood of confusion between the marks due to the different nature of the services and their different target audiences.

This decision is yet a new reminder that while the Nice Classes serve to distribute and identify goods and services covered by trade marks, the mere fact that goods or services are included in the same Class does not necessarily mean that a risk of confusion will automatically be found if the nature, purpose and target consumers differ.