February 2019. MasterCard has failed to stop the registration of the GlobalBanking device mark as a European trademark. According to the European Trademark Office EUIPO, it’s not sufficiently similar to MasterCard’s own Cirrus device mark.
Left: the GlobalBanking logo; right: the two registered EU trademarks on which Mastercard based its case
To win its case, MasterCard needed to demonstrate the reputation – and hence strong distinctive capacity – of its Cirrus device mark throughout Europe. That shouldn’t have posed a problem for a logo like Mastercard’s Cirrus, which appears on millions of credit cards and 400,000 cashpoints across Europe.
Despite this, MasterCard failed to submit the right evidence. Worse still, it was given a slap on the wrist by EUIPO, who lambasted the credit card company for producing a large quantity of inadequate evidence which the trademark authority described as ‘extremely voluminous’ and ‘completely irrelevant’.
A huge quantity of random documentation, almost none of it relating to the Cirrus logo
All MasterCard’s lawyers seem to have done is assembled a large box of documents mainly containing examples showing the use of the MasterCard logo rather than the Cirrus logo, and fired them indiscriminately at EUIPO. What’s more, most of the examples were undated and it was unclear where they originated, EUIPO complained.
So despite filing an opposition, MasterCard hasn’t succeeded in proving that the Cirrus logo has become highly distinctive through use. This limits the scope of protection afforded to its own two overlapping blue circles and makes the GlobalBanking logo sufficiently different, in EUIPO’s view.
It’s not often that EUIPO includes such harshly critical wording in its decisions. But you can understand its frustration: in cases of this kind, EUIPO has an obligation to carefully scrutinise all the evidence submitted. And if you’re extremely busy and a highly respected company simply dumps large quantities of irrelevant material on you, you’re bound to be somewhat annoyed.