Introduction
1.In May 2018 the Claimant (“Wirex”) launched a credit card rewards scheme. In the usual way of such schemes, account holders are issued with a credit or debit card and they receive rewards commensurate with the scale of their purchases on the card. The Wirex scheme differs from the norm in that rewards are in bitcoin. Wirex calls this its “cryptoback” rewards scheme. Shortly before the launch, on 28 April 2018 (“the Filing Date”), Wirex filed an application for a UK registered trade mark, which was registered on 27 July 2018 (“the Trade Mark”). It takes the form of the word CRYPTOBACK and is registered for, among other things, financial and software services. 2.The First, Second and Fourth Defendants (“the Corporate Defendants”) also offer a cryptocurrency cashback service using the word “cryptoback”. They say that the Trade Mark was invalidly registered but admit that they would infringe the Trade Mark if it were valid. 3.It is alleged by Wirex that the Third Defendant (“Mr Manuel”) is jointly liable with the Corporate Defendants for infringement of the Trade Mark. Mr Manuel’s joint liability with the First Defendant (“Global”) and the Second Defendant (“Cryptocarbon UK”) is admitted (assuming there is any liability); joint liability with the Fourth Defendant (“Bee-One”) is denied. 4.The Defendants counterclaim for a declaration that the Trade Mark was invalidly registered. They advance two grounds. They say that Global acquired goodwill associated with the mark “cryptoback” before the Filing Date and thereby acquired the right to prevent use of the Trade Mark at that date. The Trade Mark was consequently invalidly registered pursuant to sections 5(4)(a) and 5(4A) of the Trade Marks Act 1994 (“the 1994 Act”). Secondly, Wirex knew this when it applied for the Trade Mark so the application was made in bad faith pursuant to s.3(6) of the 1994 Act. 5.The counterclaim also alleges passing off by the Second Defendant to the Counterclaim (“Wirex Gibraltar”), and that the Third Defendant to the Counterclaim (“Mr Lazarichev”) and the Fourth Defendant to the Counterclaim (“Mr Matveev”) are jointly liable with both Wirex and Wirex Gibraltar for passing off. There is a further allegation that Mr Lazarichev and Mr Matveev are primary tortfeasors for passing off. 6.It will be seen from the foregoing summary of the issues that the central question is whether Global owned goodwill at the Filing Date associated with “cryptoback” as a trading name. 7.Andrew Norris QC appeared for Wirex and the three Defendants to the Counterclaim; Jonathan Hill appeared for the Defendants.