Brown Rudnick client Wirex, one of the world’s leading cryptocurrency payment platforms, has been successful in its High Court trade mark infringement claim against Cryptocarbon Global Ltd, Cryptocarbon UK Ltd and Bee-One UK Ltd, in respect of their unauthorised use of Wirex’s registered trade mark, CRYPTOBACK.
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 in Bitcoin who use their Wirex card for in-store purchases.
In yesterday's judgment, which follows a High Court trial that took place in January of this year, His Honour Judge Hacon found that Wirex’s CRYPTOBACK trade mark was valid and had been infringed by the defendants, and all of the defendants’ counterclaims, including their application to invalidate Wirex’s Cryptoback trade mark, were dismissed. His Honour Judge Hacon also held that Mr Subash Manuel, a Director of these companies, was jointly liable for the infringing activities of Cryptocarbon Global Ltd and Cryptocarbon UK Ltd.
Steven James, Partner at Brown Rudnick said: “This case highlights how important it is for cutting edge, fast-growth businesses, such as Wirex, to protect and enforce their trade marks and other intellectual property in their key markets. 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.
At Brown Rudnick, we are seeing a continued increase in trade mark applications across the creative, technology and financial sectors. Securing trade mark protection allows businesses to protect their brands and create highly valuable, strategic business assets. We hope that today’s judgment will remind businesses of the importance of securing trade mark protection at the earliest possible stage, and wherever possible prior to launching a new product or service.”
Brown Rudnick had secured trade mark protection for Wirex in the UK and in other key markets across the globe. Wirex subsequently discovered that the defendants, Cryptocarbon, were using the CRYPTOBACK name for their own cryptocurrency rewards scheme. Following the defendants’ refusal to accept that they had infringed the Wirex trade mark and their decision to continue using the CRYPTOBACK brand, Wirex issued its claim for trade mark infringement in September 2019. The Court ultimately held that the defendants’ claims to have earlier rights in the CRYPTOBACK mark in the UK were unfounded.