Case studies · Case study 06 · Trademarks · EU General Court
Shopify v EUIPO, Case T-222/21: when a major platform comes for your trademark, the defence is built on the software.
In 2017 we registered the EU figurative mark "Shoppi" for a payments and local-commerce platform. Shopify, one of the largest e-commerce platforms in the world, applied to have it declared invalid for likelihood of confusion with "SHOPIFY". Three European instances later, the mark is still ours and the General Court's judgment is cited by commentators as a precedent on the root "SHOP". This case is about method: how to prepare the technical side of a trademark defence when the opponent is a hundred times your size.
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Case sheet
Role
Co-owner of the mark and in charge of the technical framing; trusted counsel handled the defence
Opponent
Shopify Inc., represented by one of the leading German IP firms
Proceedings
EUIPO Cancellation Division; Board of Appeal R 785/2020-2 (18 Feb 2021); General Court T-222/21 (12 Oct 2022)
What I produced
Technical dossier on the sign in the software (where it appears, how users read it), evidence of the use of "shop" across the sector, USPTO filings, framing of the argument with counsel
Public sources
ECLI:EU:T:2022:633; CURIA register; Wiggin LLP commentary
Duration
European track 2019-2022, with parallel proceedings followed in other offices
Context
A figurative mark registered in 2017 for a payments and selling app for physical stores. In 2020 Shopify launched "Shop Pay" and "Shop" and, in parallel, filed oppositions and invalidity actions against "Shoppi" in several jurisdictions. For a start-up with four developers, merely tracking deadlines across four offices is a full-time job.
Problem
On paper the signs look alike: same root, same sector, identical or similar services. The classic defence, listing the differences between the words, is not enough against a well-known mark. Two things had to be shown: that the root "SHOP" is descriptive for anyone selling online, so it protects no one, and that "SHOPIFY" had no enhanced distinctiveness sufficient to change the outcome.
What I did
- Moved the comparison from vocabulary to product: how and where the sign appears in the software, what a merchant sees when using it, in which context they meet "Shoppi" and in which "Shopify". Confusion is assessed on the real public, professionals with a heightened level of attention.
- Collected evidence of the use of the word "shop" across the sector: registered marks, product names, interfaces. A root everybody uses cannot be anyone's dominant element.
- Framed with counsel the argument that held at every instance: similarity confined to an element not eligible for protection, no proof of enhanced distinctiveness of the earlier mark, no likelihood of confusion.
- Prepared the technical documents for the parallel proceedings in the United States and personally managed the group's domain portfolio, including UDRP and URS procedures.
Result
The Cancellation Division dismissed Shopify's application in its entirety; the Board of Appeal confirmed in February 2021; the General Court of the European Union dismissed the action on 12 October 2022: no likelihood of confusion, "SHOP" is a descriptive element that reduces the weight of the similarity between the signs. The mark remains registered and in use. The same technical dossier served, with adaptations, the parallel proceedings in other offices.
What I would do differently
- I would have chosen the name with a stricter clearance search. A descriptive root, "shop", can be defended, and we proved it, but it costs years of proceedings that an invented name would never have attracted. Today I say so to every client before filing.
- I would have built the technical dossier from day one, not after the first opposition: dated screenshots, software versions, marketing material with certain dates. Evidence is collected while nobody is asking for it yet.
- A dispute across four offices needs a single register of deadlines and serial numbers. I set it up late; today it is the first thing I prepare for a client.
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