Two users of ‘cryptoback’
A recent case in the Intellectual Property Enterprise Court saw these issues play out.
Wirex filed a UK trade mark for ‘CRYPTOBACK’ in 2018. ‘Cryptoback’ is a contraction of ‘cryptocurrency’ and ‘cashback’ and this is exactly the service offered by Wirex: a rewards scheme where, instead of receiving cashback, customers who spent money on Wirex’s credit cards received cryptocurrency rewards - Bitcoin.
Cryptocarbon offered a similar service and also used the term ‘cryptoback’. Wirex accused Cryptocarbon of trade mark infringement and sued.
Cryptocarbon accepted that they would infringe, but said that Wirex’s trade mark was not valid. Cryptocarbon argued that they already had rights in the word ‘cryptoback’ before Wirex filed to protect it - essentially saying that they got there first.
Neologisms are newly coined words or expressions that come into use to describe new things.
Cryptoback is one example – it has come into use to describe cashback-type rewards that are given in the form of cryptocurrency as opposed to a longer established currency. Although trying to register a neologism as a trade mark is an attractive option it is likely to run into problems. Why? Because you are not normally allowed to monopolise a word that is descriptive of the goods or services that it is used for. If trade marks were granted over descriptive words then other traders wouldn’t be able to use them, which would be unfair and would stifle competition.
So had ‘cryptoback’ become distinctive of Cryptocarbon’s services by the time Wirex’s trade mark was filed? Possibly, but this would need very convincing evidence.
Outcome – and evidential issues
Most of Cryptocarbon’s evidence related to use of ‘cryptoback’ on web pages, in email communications and account summaries showing cryptoback payments. But this failed to show how many people in the UK had actually seen these references or used the service. This is a vital part of demonstrating prior rights in a trade mark.
Cryptocarbon had also started using another name for their service in 2018, which weakened their case further.
Cryptocarbon’s weak evidence meant they failed to show they had built up rights to ‘cryptoback’ before Wirex filed their trade mark. As they could not invalidate Wirex’s trade mark, Cryptocarbon were liable for infringing it.
What can we learn from this?
- Take care with neologisms. Depending on how they are used they may be perceived by the public as a description of a new kind of product. And if that happens, building up trade mark rights will be difficult.
- If you want to show that you have trade mark rights in a potentially descriptive term, you will need to have convincing evidence that the words are distinctive of your goods or services. In this case the evidence did not go far enough to show that UK customers had used Cryptocarbon’s cryptoback service, or appreciated that cryptoback was being used as a trade mark.
- Double check your evidence. It appears that much of the evidence in this case was hard to read or access for the judge and was confusing. That’s unlikely to help your chances of success.