Coinbase vs. Coinbase

Coinbase is an established name in the world of crypto, as it is one of the largest crypto exchange platforms in the United States.

Logically, you would expect only one party to claim the right to this name, but two parties are currently using it. It’s hardly surprising that they have been at loggerheads in EU courts for quite some time.

The conflict began when Coinbase Global OÜ (Tallinn) filed an EU trademark application to use the trademark “coinbase” for financial services in digital currencies (Class 36) and for news services (Class 41). In 2019, Coinbase Inc. (US) filed an opposition against this EU application based on its previous EU registrations for COINBASE. While these earlier EU registrations included class 36, they did not cover class 41.

It is obvious that the trademarks are sufficiently similar. However, it is equally important to determine whether the services are also similar. In particular, are there similarities between the services in Class 36 and those in Class 41? And is it possible to claim that services such as trading in virtual currency are similar to news reporting?

My initial thought would be to agree and say that this is a plausible argument. After all, news also covers topics like digital currency and most people probably do some research by reading news articles before purchasing crypto.

Both parties dug their teeth into the matter. Coinbase US was convinced that the services were similar and had no intention of tolerating the trademark from Coinbase Global OÜ (Tallinn) for either Class 36 or Class 41. It came as no surprise when the European Trademarks Office ruled that the EU application from Coinbase Global OÜ (Tallinn) must be rejected for all services in Class 36. However, the application to register news-related services in Class 41 was allowed as these services are not similar enough to assume any risk of confusion, even though the trademarks are practically identical.

Coinbase US disagreed and the subsequent discussion led to the European Court of First Instance. The European Court of First Instance also ruled against Coinbase US. There can be no risk of confusion if the services in the classes are not similar. It is important to note that if, for example, a news agency issues publications or news on a specific topic such as crypto, this does not automatically imply that it also provides trading services in this area. This would mean that news services can be considered similar to anything else. Coinbase US' argument that they also publish a lot of news was dismissed: if this is the case, they should have registered their trademark for Class 41 services as well.

We can deduct two important lessons from this case. On the one hand, it would have been strategic for Coinbase US to invoke the reputation of their EU trademarks to enable them to take legal action against other classes. The question is whether they would have been able to prove this reputation in the EU.

The second lesson is that you always have to think very carefully about additional classes. Coinbase US would have had a much easier time if it had included class 41 in its applications from the outset. This case shows just how important it is to have a meticulously planned strategy for registration.

Author: Matthias Van Den Broek

Bio: Matthias van den Broek is a trademark attorney and specialist in advising in online brand protection and domain name disputes. His client portfolio includes well-known names in the financial sector, ranging from crypto startups to market makers. Matthias enjoys writing about current intellectual property issues, with an affinity for design law.