The protectability of figurative marks: the Coinbase case before the EGC
The judgment of the European General Court (EGC) of 19 June 2024 (Az. T-304/23) clarifies the high requirements for the distinctiveness of minimalist figurative marks. In the case of the US company Coinbase, a platform for cryptocurrencies, the court rejected the registration of a simple geometric symbol as a figurative mark.
Background to the case
Coinbase applied to the European Union Intellectual Property Office (EUIPO) for registration of an openwork circle as a figurative mark.
This trade mark was intended to protect a wide range of goods and services, in particular in the areas of cryptocurrencies, financial services and software. However, the EUIPO rejected the application on the grounds that the trade mark was devoid of any distinctive character under Article 7(1)(b) of the European Union Trade Mark Regulation (EUTMR).
After an unsuccessful appeal against the EUIPO's decision, Coinbase filed an action with the EGC. Among other things, the company claimed a violation of Article 7(1)(a) of Regulation 2017/1001 and of the principles of equal treatment and good administration.
Decision of the EGC
The EGC upheld the EUIPO decision and dismissed the action. It justified this by stating that the sign in dispute represented a simple geometric shape that would not be perceived by the relevant public as an indication of origin. The sign thus lacked the necessary distinctiveness. However, such distinctiveness is absolutely necessary for a trade mark to be able to function as an indication of commercial origin.
Coinbase's argument
The court was not convinced by Coinbase's argument that the sign was ambiguous and therefore distinctive. The company had argued that the symbol could be interpreted in the abstract, for example as a ‘Landolt ring’, a key, a spoon or a spatula. Furthermore, it is possible to understand the shape as a stylised letter ‘C’, which would create a connection to the company name Coinbase. Coinbase also argued that stylised, minimalist signs are common in the digital finance sector and are perceived by consumers as indications of origin.
However, the Court rejected these arguments. It made it clear that a multitude of possible interpretations is not sufficient to establish the distinctiveness of a sign. The decisive factor is whether the relevant public can actually recognise the sign as an indication of the origin of the goods and services. Such a perception does not exist in the present case. In particular, it is unlikely that the broken circle would be seriously interpreted as the letter ‘C’ because the shape is rounder and less open than a typical letter ‘C’. Furthermore, other design elements that could support this interpretation are missing. The reference to the supposed common use of minimalist logos in the industry was also not supported by sufficient evidence.
No arbitrary treatment by EUIPO
On another point, Coinbase accused EUIPO of violating the principles of equal treatment and good administration, as similar signs had been accepted as trade marks in the past. The company referred to an earlier international registration of the same sign, which had been extended to the EU, as well as to national registrations in member states and third countries. The EGC rejected this objection and emphasised that the EUIPO is bound only by the provisions of the EU Trade Mark Regulation. Earlier registrations therefore have no influence on the decision in the present case.
Conclusion
The judgment clarifies the strict requirements for the registrability of minimalist figurative marks in the European Union. Geometric shapes can only enjoy protection if they are perceived by consumers as a clear indication of origin. Theoretical possibilities of interpretation or stylistic similarities with letters or other symbols are not sufficient for this. The judgment also confirms that the EUIPO strictly examines trade mark registrations in accordance with the legal requirements and does not allow any deviations due to supposedly comparable registrations. Companies wishing to protect minimalist logos should therefore carefully check whether the requirements for distinctiveness are met.
As this decision also shows, the legal basis applied by the EUIPO has been interpreted in a much more applicant-friendly way in the past. Not every trademark that has been granted sufficient distinctiveness by the Office in the past must still be judged in this way today.
Image credit: Ahmed - stock.adobe.com
