Union trademark rejected too sweepingly - ECJ annuls EUIPO decision

With a picture combination of euro and dollar signs, one could think of money exchange transactions. The EUIPO therefore refused the desired registration as a Union trademark, but the ECJ recently annulled this decision. Why?

Union Trademark in question

Icons and symbols have become an integral part of the mobile Internet world. Of course, the symbols for euros and dollars are also absolutely common. In 2015, the Polish company Cinkciarz wanted to have a visual combination of both protected as a Union trademark for the following goods and services: Computer software, finance, in particular money exchange, and publications. However, EUIPO refused the desired trademark registration. The sign applied for is descriptive and therefore indistinguishable, the EUIPO explained its decision. The EUIPO considered that the circular picture elements used “did not sufficiently change the known currency symbols” and conveyed a clear message for the goods and services covered by the application to “relevant public”.

The company Cinkciarz did not accept this decision and asked the European Court of Justice (ECJ) to annul the EUIPO decision.

The ECJ ruled at the beginning of March: The Court annulled the EUIPO’s rejection of the figurative mark with the currency symbols as a Union trademark. The Court’s key argument is that the EUIPO was too general in its justification for its decision.

The reasons for each of the goods and services concerned must be given

The Court emphasises that any refusal by the EUIPO to register must, in principle, be justified in relation to each of the goods and services concerned. It is different if the same ground for refusal applies to all the goods and services concerned. In this case, the EUIPO could give a general justification, but this was not the case in this case. The ECJ argued that the goods and services requested by Cinkciarz were not “so directly and concretely related” that they formed a “sufficiently homogeneous group of goods or services”. Such a link is to be found mainly on the basis of the characteristics common to the desired goods and services, the Court specified.

No common characteristic of all goods and services concerned

To that end, the Court examined the three goods and services concerned: computer software, finance, in particular money exchange, and publications. More than 80 goods and services would be covered by the Union trade mark applied for in these three very different classes, but the EUIPO had only referred to the connection with money exchange operations. However, this is not a common characteristic of all the goods and services in question. For anyone else who has no connection with money exchange transactions, the EUIPO should have formulated its own reasons.

Lack of justification also in the conclusion on lack of distinctiveness

But even if all three goods and services concerned had in fact been linked to money exchange operations, the ECJ would annul the EUIPO ruling for another reason. For the EUIPO had also failed to give sufficient reasons why it would be possible for the relevant public to’immediately and without further consideration recognise a description of all the goods and services in question’. In other words, there was no justification as to why the relevant public could think of money exchange transactions in a combination of euro and dollar signs. The ECJ therefore also considers that the EUIPO’s conclusion on the lack of distinctiveness of the mark applied for is not justified.