Wirex Ltd v Cryptocarbon Global Ltd & Ors [2021] EWHC 617 (IPEC) (16 March 2021)

Wirex Ltd v Cryptocarbon Global Ltd & Ors [2021] EWHC 617 (IPEC) (16 March 2021)

The defendants failed to establish that they had acquired goodwill in 'cryptoback' as a trade name prior to the filing date. The evidence did not show that the public in the UK perceived 'cryptoback' as distinctive of the defendants' services. Therefore, the trade mark was validly registered and infringed by the...

Source-derived case information.

Citation
[2021] EWHC 617 (IPEC)
Parties
Claimant: Wirex Limited; Defendant: Cryptocarbon Global Limited; Defendant: Cryptocarbon UK Limited; Defendant: Subash George Manuel; Defendant: Bee-One UK Limited; Defendant to Counterclaim: Wirex (Gibraltar) Limited; Defendant to Counterclaim: Dmitry Lazarichev; Defendant to Counterclaim: Pavel Matveev
Jurisdiction
England and Wales
Judgment Date
16 March 2021
Procedural Posture
Intellectual Property (trade Mark and Passing Off) / First Instance Judgment
Outcome
Claimant succeeds; trade mark held valid and infringed. Counterclaim dismissed.
Legal Topics
Trade Mark Validity, Trade Mark Infringement, Passing Off, Goodwill, Bad Faith, Joint Tortfeasorship
Intellectual Property Trade Mark Validity Trade Mark Infringement Passing Off Goodwill Bad Faith Joint Tortfeasorship

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Summary, issues, holding and outcome

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Parties

Wirex Limited

Claimant

Cryptocarbon Global Limited

Defendant

Cryptocarbon UK Limited

Defendant

Subash George Manuel

Defendant

Bee-One UK Limited

Defendant

Wirex (Gibraltar) Limited

Defendant to Counterclaim

Dmitry Lazarichev

Defendant to Counterclaim

Pavel Matveev

Defendant to Counterclaim

Procedural Posture

Intellectual Property (trade Mark and Passing Off) / First Instance Judgment

Legal Issues

  1. 1 Whether the 'CRYPTOBACK' trade mark was invalidly registered under sections 5(4)(a) and 3(6) of the Trade Marks Act 1994
  2. 2 Whether the defendants had acquired goodwill in 'cryptoback' prior to the filing date
  3. 3 Whether the trade mark was applied for in bad faith

Ratio Decidendi

The defendants failed to establish that they had acquired goodwill in 'cryptoback' as a trade name prior to the filing date. The evidence did not show that the public in the UK perceived 'cryptoback' as distinctive of the defendants' services. Therefore, the trade mark was validly registered and infringed by the corporate defendants. The allegation of bad faith also failed. Mr Manuel was not jointly liable for Bee-One's acts as there was insufficient evidence of his personal involvement.

Court Disposition

Claimant succeeds; trade mark held valid and infringed. Counterclaim dismissed.

Orders

  • Declaration that the 'CRYPTOBACK' trade mark is valid.
  • Finding of infringement by the corporate defendants.