Digital payment platform Wirex has won its High Court battle over the use of its ‘Cryptoback’ Bitcoin reward scheme.
In a hearing which began in January, Wirex founders Pavel Matveev and Dmitry Lazarichev argued the owners of Cryptocarbon Global Ltd, Cryptocarbon UK Ltd and Bee-One UK Ltd had infringed London-based Wirex’s ‘Cryptoback’ trademark.
The Cryptoback scheme gives up to 1.5% of the transaction value back to customers in Bitcoin who use their Wirex card for in-store purchases.
Giving evidence for the defendants, Mr Subash George Manuel, claimed his companies had started using ‘Cryptoback’ from 2017 in good faith, and that Wirex’s registering of the trademark was invalid.
In cross-examination, however, some of Mr Manuel’s witness statement was deemed ‘unreliable’.
The judge also ruled that Global’s use of the term ‘cryptoback’ did not have enough exposure to UK consumers to be considered as being used in good faith.
In his summary, Judge Hacon commented: “In my view the evidence does not establish that at the filing date Global owned goodwill which was associated with a trade name ‘cryptoback’”.
He added that the allegation of invalidity of the Trade Mark pursuant to section 5(4)(a) of the 1994 Act failed. It had already been accepted by the defendants that, should the allegation fail, then the allegation of Wirex acquiring the trademark in bad faith would also fail
Accordingly, this meant the ruling could only conclude that Wirex’s trademark was valid and had indeed been infringed.
As a consequence, Judge Hacon also held that Mr Subash Manuel, a director of Cryptocarbon Global Ltd and Cryptocarbon UK Ltd was jointly liable for the infringements.
Commenting on the ruling, Wirex’s legal representative – Steven James of Brown Rudnick – said the importance of protecting intellectual property should not be underestimated.
“This case highlights how important it is for cutting edge, fast-growth businesses, such as Wirex, to protect and enforce their trademarks and other intellectual property in their key markets,” he said.
“This is especially true in the case of the crypto industry, which has seen rapid growth but also a large number of copycat or otherwise infringing offerings.”
He also pointed to a continued rise increase in trademark applications across FinTech.
“Securing trademark protection allows businesses to protect their brands and create highly valuable, strategic business assets,” he added.
“We hope that today’s judgment will remind businesses of the importance of securing trademark protection at the earliest possible stage, and wherever possible prior to launching a new product or service.”