WHAT HAPPENED
Consensys Software Inc. opposed Chun Zhong’s EU trademark application for “metamask” (App. No. 18868719).
Although the marks were visually identical, they covered different types of goods:
- Earlier mark (2018): Blockchain-related software (wallets, identity, transactions)
- Later mark: Downloadable goods such as music files, ringtones, images, and e-publications.
The EUIPO rejected the opposition, and the appeal was dismissed on 25 June 2024.
WHY IT MATTERS
The Board ruled that:
- Identical marks alone are not enough under Article 8(1)(b) EUTMR.
- There must be similarity between goods/services.
- Blockchain tools and consumer downloadables are not comparable.
- NFT links were deemed optional, not decisive.
LESSON FOR BRAND OWNERS
✅ Trademark disputes hinge on similarity of goods and services, not just names.
✅ If your mark has strong reputation, consider Article 8(5) for protection against dissimilar goods.
✅ Always assess market overlap before filing oppositions.
IN SUMMARY
The “METAMASK” case reinforces a key IP principle: identical marks don’t automatically mean consumer confusion.
Strategic use of reputation-based claims may be crucial in cross-sector trademark protection.
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