Battle of the Crypto Trade Mark

Wirex, one of the world’s leading cryptocurrency payment platforms, has been successful in its High Court trade mark infringement claim against Cryptocarbon Group and Bee-One UK Ltd, in respect of their unauthorised use of Wirex’s registered trade mark, CRYPTOBACK.

CRYPTOBACK is a UK registered trade mark under registration no. UK00801426542 in July 2018. The registration covers classes 9, 36 and 42.

Wirex was the world’s first company to offer a cryptocurrency rewards scheme, which they branded ‘Cryptoback’, and which gives up to 1.5% of the transaction value back to customers who use their Wirex for in-store purchases.

Wirex became aware of trade mark infringement and issued a claim to the courts in September 2019 after discovering that the defendants were using the Cryptoback name in conjunction with a cryptocurrency rewards scheme. It was not to say that the defendants would being backing down, they prepared invalidation proceedings against the trade mark registration and prepared a thorough defence stance.

The trial took place in the High Court and Judge Hacon found that Wirex’s Cryptoback trade mark was valid and infringed by the defendants, and all of their counterclaims (including to invalidate the Cryptoback trade mark) were dismissed. It difficult to say whether this is over yet and it would be more than likely an appeal is being prepared. We will no doubt keep close tabs on this case.

The enforcement of trade mark infringement is vital to ensure the protection of trade mark. Sitting on your rights will ultimately lose your rights.

Briffa advises on all aspects of trade mark law and practice and offers free consultations to all new clients. If you would like to have a call or a meeting at our offices in the Business Design Centre in London, please call 020 7096 2779 or email info@briffa.com.

Written by Hasnath Ahmed, Associate