Last month, the General Court of the European Union (GC) handed down the decision in case T-501/18 (not available in English). This decision concerns the validity of the word trade mark ‘Cinkciarz’ for goods and services in classes 9, 36 and 41 of the Nice classification for, among others, banking and exchanging money services.

‘Cinkciarz’ is a Polish word which, under the Polish People’s Republic, described people who illegally bought and sold foreign currency.

Background

On 26 January 2015, Cinkciarz.pl sp. Z o.o., successfully applied to register the word mark ‘Cinkciarz’. On 22 December 2015, Currency One S.A. challenged the validity of the trade marks claiming that it was descriptive and devoid of distinctive character. The action was rejected as both the Cancellation Division and the Board of Appeal of the European Intellectual Property Office found that the term ‘cinkciarz’ was not descriptive of the essential characteristics of the goods and services at issue. An appeal to the GC followed.

Analysis

The GC, having recalled that, under Article 7(1)(c) of Regulation 2017/1001, to be descriptive a sign:

“must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the category of goods and services in question or of one of their characteristics” (DeutschePost EURO EXPRESS/OHMI (EUROPREMIUM), T‑334/03)

In order to analyse the descriptive and distinctive character of the trade mark at issue, the GC noted the importance of establishing the meaning of the Polish word ‘cinkciarz’ from the perspective of the relevant public.

As mentioned, the GC noted that this word used to describe people who illegally bought and sold foreign currency. At the time of the Polish People’s Republic, currency exchanges fell under State monopoly and the term had a negative connotation, private parties performing it having a bad reputation. Since 1989, however, currency exchange operated by private parties has been lawful and the term seems to have acquired an historical connotation. The GC also pointed out that the word has been used in a contemporary meaning as implying cheating, ie a fraud connected to money exchange. A neutral meaning of the term, simply describing the service of currency exchange was not found. [32]

The GC recalled that one of the aims of Regulation 2017/1001 is to contribute to removing barriers to free movement of goods and services. This freedom, however, exclusively concerns goods and services lawfully introduced into the market. Trade mark protection cannot be granted to designate illegal products or services. In the case at issue, the relevant public is aware that the services concerned are not illegal. [53]

Moreover, according to the GC, it is not possible to base the descriptive character of the term at issue on the speculation than it might become a generic word to describe the services at issue. The action was therefore rejected. [63]

Comment

This decision, mostly based on the interpretation of the Polish word ‘cinkciarz’, underlines the importance of the connection between trade mark law and languages. In this particular case, the development of the word’s meaning was based on historical changes. Generally speaking, Article 7(1)(c) of Regulation 2017/1001 does not require a term to be positive or neutral in order to have a descriptive character. Hence, it cannot be ruled out that in the future the term ‘cinkciarz’ might acquire a generic meaning. It is now in the power of the trade mark holder to prevent this from happening.