Assimilation of repeated trademark filing practices to bad faith
TEU, 21 April 2021, decision T-663/19
Hasbro, a company active in the field of games and toys and well known for its board games, is the owner of the emblematic trademark "MONOPOLY".
It has registered several European Union word marks "MONOPOLY", in particular the marks:
• MONOPOLY No. 238352 registered on 23 November 1998 in classes 9, 25 and 28
• MONOPOLY No. 6895511 registered on 21 January 2009 in class 41,
• MONOPOLY No. 9071961 registered on 25 March 2011 in class 16 and in classes 9, 16, 28 and 41 respectively. This application partly covered new goods and services, but also, to a greater extent, goods already protected by the earlier marks, such as electronic games in class 9, games, toys in class 28 or entertainment services in class 41.
A Croatian company, Kreativni Dogadaji, filed a cancellation action against the trademark application MONOPOLY No. 9071961, arguing that it was a repeated application and therefore made in bad faith. This new filing is considered as "repeated" because it consists of an identical sign and designates goods and services already covered (at least partially) by the earlier trademarks. Such a filing strategy would constitute bad faith in that it provides "an administrative advantage consisting in not having to prove the serious use of the re-filed mark". The Cancellation Division of the EUIPO rejected this claim (EUIPO Decision No. 1164 C).
The EUIPO's Board of Appeal rejected the first instance position, stating that while it is perfectly legitimate for companies to direct their commercial interests towards other goods and services and to register additional trademarks for these new goods and services. It is however not permitted to make a repeated filing to circumvent the use requirement of Article 18 of the European Union Trademark Regulation (EUTR).
Hasbro therefore filed an appeal before the General Court (GC).
The GC first recalled that "the recording in the EUIPO register cannot be assimilated to a strategic and static registration conferring on an inactive owner a legal monopoly for an indefinite period". He added, secondly, that a repeated filing of a trademark made to avoid the consequences of non-use of earlier trademarks may constitute a relevant element that could establish the bad faith of the applicant. Indeed, it considers as fraudulent the behaviour which was aimed at continuously and abusively extending the "5-year grace period" in order to avoid the consequences of a possible cancellation of the earlier trademarks.
It results from the position adopted that the following arguments do not constitute a defence to the claim of bad faith
• the fact that the repeated filing was not made just before the expiry of the grace period and therefore did not result in a "particularly long" extension of the grace period
• the fact that the filing strategy "was common in the industry" and that Hasbro "acted in accordance with the advice of counsel".
According to the Court of First Instance, Hasbro's filing strategy was not only incompatible with the objectives pursued by the European Union Trademark Regulation, but constituted also an abuse of rights.
In this decision, bad faith is interpreted broadly, as it extends to all products included in a more general category of products in the earlier filings. In this case, "games" were considered to include "gaming machines", "slot machines" and "playing cards".
The Court concluded by confirming in all respects the analysis of the EUIPO's Board of Appeal and cancels the contested trademark for all goods and services identical to those covered by Hasbro's earlier trademarks.
LAVOIX's opinion: this decision is a real reminder to all right holders of the need to exploit their trademarks. It also highlights the danger of re-filing if the previous trademark is not exploited in parallel.
LAVOIX is at your disposal to assist you in your proceedings, and in particular in verifying, prior to any new trademark filing, the effective exploitation of your prior rights.