The General Court of the European Union in Luxembourg ruled in favor of company Cinkciarz.pl whose trademark “cinkciarz” (meaning in Polish a black market money changer) was challenged by a competitor, company Currency One, on the plea of it being descriptive and having no distinctive capacity. The General Court of the European Union considered that the word “cinkciarz” may be a protected trademark and that the plea of descriptiveness was unfounded. Thus, company Cinkciarz.pl retained the monopoly in the European Union to use the word “cinkciarz” inter alia in the financial sector and with regard to the service of currency exchange.
In 2015 Cinkciarz.pl applied to the European Union Intellectual Property Office (EUIPO) for registration of the EU trademark for computer software, financial services and specifically currency exchange, and publishing.
EUIPO registered the word trademark cinkciarz. In the same year company One S.A. requested cancellation of the foregoing trademark registration claiming that it was descriptive and non-distinctive and should be available for all the undertakings. The request was dismissed by EUIPO in the first instance and, subsequently, by the EUIPO Board of Appeal. Currency One S.A. brought an action against the foregoing decision of the Board of Appeal to the General Court of the European Union.
In its judgment announced on 19 December 2019, the General Court dismissed the action of Currency One. The General Court noted that the word “cinkciarz” is not a description of a profession nor does it describe the services of currency exchange and, therefore, there are no grounds to consider it descriptive. Dr hab. Ewa Skrzydło-Tefelska and attorney Karol Gajek, lawyers of the Sołtysiński Kawecki i Szlęzak law office who represented company Cinkciarz.pl at the General Court of the EU, emphasize that the judgment is significant also in a broader context. It proves that trademarks which have numerous various connotations and meanings – including historical or referring to previously illegal practices – may be perfectly well used as a trademark. The mere fact that a trademark invokes a connection with certain goods or services is not sufficient to consider such trademark descriptive. The lawyers note that the judgment is not yet valid in law.