COINBASE successful in invalidating its rival’s identical mark on grounds of bad faith

Written by Admin | 18 Sep, 2023

Case:

In The Matter of a Protected Trade Mark In The Name Of bitFlyer Inc. And An Application For A Declaration Of Invalidity By Coinbase, Inc. [2023] SGIPOS 9

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”)

Type:

Trade Mark Application

Applicant:

Coinbase, Inc. is a leader in the provision of digital asset and currency exchange services and related software and services. It operates a digital currency wallet and platform where merchants and consumers can transact using digital currencies such as Bitcoin, Ethereum and Litecoin.

Proprietor:

bitFlyer Inc. is a Bitcoin exchange and marketplace which enables its customers to buy, sell and spend Bitcoins.

Background of the Matter:

This matter concerns the mark “COINBASE” filed by the Proprietor in Class 35, 38 and 42. (“Application Mark”).

Broadly, the Applicant relied on two grounds in the invalidation, namely that:

(i) the application to register the Mark was made in bad faith; and
the Mark is identical or confusingly similar to its earlier “COINBASE” mark; and

(ii) they are registered in relation to similar goods and services, resulting in a likelihood of confusion.

Issue:

Whether the Proprietor’s application was made in bad faith to warrant invalidation of the registration.

Decision:

The application for a declaration of invalidity by the Applicant was successful. The protection of the Proprietor’s registration was declared invalid.

Points of Interest:

1. The threshold to show bad faith is high – it encompasses actual dishonesty and dealings which would be considered as commercially unacceptable by reasonable and experienced persons in the trade. An allegation of bad faith is a serious one and must be sufficiently supported by evidence.

2. The Registrar agreed that that there had been outright copying of its “COINBASE” mark. The Proprietor was aware of the Applicant and its “COINBASE” mark before the Relevant Date and nonetheless sought the protection of the Subject Mark. The Proprietor failed to provide a clear explanation as to how its “Coinbase” mark was derived. Such conduct fell below acceptable commercial standards.

3. In assessing bad faith, the Registrar also took into consideration the argument by the Applicant that that the Proprietor had no present or fixed intention to use the mark, but wished to stockpile the mark for use at some indeterminate time in the future. This includes careful assessment of the Proprietor’s business interest and focus and whether there is any significant change and convergence at any given time.

4. There is an overlap between (1) the ground of bad faith for a lack of bona fide intention to use a registered mark, and (2) a revocation of the registered mark on the ground of non-use for a continuous period of 5 years. While these are separate grounds to challenge the registration of a mark, they overlap on the issue on the lack of use. In the former, we are concerned with the lack of intent to use the mark at the time of applying to register it. In the latter, it is the fact that there is a lack of use that is relevant. The Registrar noted that evidence of the lack of use may be used to support the finding that there was a lack of intent to use.

5. In this present case, the evidential burden of proof has shifted to the Proprietor to refute the bad faith argument that the Proprietor had no bona fide intent to use the Subject Mark on specific items in its protected scope of services, having regard to the nature of the Proprietor’s business but failed to adduce any supporting evidence on the same.

6. The Registrar found that “coinbase” and “COINBASE”, respectively the Subject Mark and the Applicant’s Mark, are identical - noting that a mark registered in upper case in plain font covers all stylistic permutations of the mark, and that the same words in plain font are considered identical despite differences in letter case.

7. A trade mark must not be registered if it is identical with an earlier trade mark and is to be registered for goods and/or services similar to those for which the earlier trade mark is protected, resulting in a likelihood of confusion on the part of the public.