Board of EUIPO says re-filing of ’Monopoly’ as EUTM is invalid due to bad-faith

As an EU trade mark (EUTM) proprietor, one must keep in mind that there is a five year grace period to use the registered mark. Following the expiry of this period, third parties may seek the revocation of the EUTM in relation to goods and services for which it has not been used. It is therefore common practice for some trade mark proprietors to re-file their respective marks and secure another five year period in relation to the new mark. 

In this context, the Second Board of the EUIPO has, in an interesting decision, partially invalidated the EUTM ‘Monopoly’. In particular, the Board considered that a re-filing of the EUTM in question, was made in bad faith as it included goods and services already covered by the earlier registrations.

Hasbro is the proprietor of the word mark ‘MONOPOLY’, which it registered for different categories of by means of different applications filed between 1996 and 2010. In 2010, Hasbro filed to register ‘MONOPOLY’ goods and services in Classes 9, 16, 28 and 41 of the Nice Classification. The application was published on 9 August 2010 and the mark was registered on 25 March 2011.

In 2015, Kreativini Dogadaji d.o.o., filed an application for invalidation of the latter mark, arguing that it had been registered in bad faith on the basis that the mark was a repeat filing of three identical earlier trade mark registrations for MONOPOLY owned by Hasbro. The said mark covered the same goods and services in the earlier three registrations as well as some additional goods and services.

The Cancellation Division dismissed the application and the case was appealed to the EUIPO Second Board of Appeal.

Article 59(1)(b) of the EU Trade Mark Regulation (EUTMR) sets out that a trade mark shall be declared invalid where the applicant acted in bad faith at the time of filing the application for the trade mark. In Chocoladenfabriken Lindt & Sprüngli (C-529/07) the Court of Justice of the European Union (CJEU) established that account must also be taken of all the relevant factors specific to the particular case, in particular:

The fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service that could be confused with the sign for which registration is sought;

The applicant’s intention of preventing that third party from continuing to use such a sign; and

The degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

However, the criteria above are just examples, as a number of factors can be taken into account in order to decide whether the applicant was acting in bad faith at the time of filing the application. For example, the Lindt-case does not mention specifically whether re-filings and re-applications qualify for determining bad faith.

The Board’s attention thus focused on the General Court’s decision in Pelikan (T-136-11). In that case, the General Court stated that, where an EUTM proprietor files a repeat application for the same trade mark in order to avoid the consequences entailed by total or partial revocation of the earlier registration(s) for non-use, it is possible to take all this into account in order to assess whether the proprietor acted in bad faith.

The Board noted that, at the time of Hasbro’s EUTM filing in August 2010, Hasbro had on three previous occasions already filed and successfully registered ‘Monopoly’ as an EUTM. It was therefore possible to assert that Hasbro had a dishonest intention at the time of filing the contested EUTM. In protecting the same mark over a period of fourteen years the EUTM proprietor improperly and fraudulently extended the five-year grace period indefinitely to evade the legal obligation of proving genuine use and the corresponding sanctions.

However, the Board also took note of that the contested EUTM covered a wider range of goods and services in relation to the earlier registrations. In this regard, applying for a large variety of goods and services is a common and acceptable business practice in the Board’s view. Nonetheless, the Board also noted that it is not acceptable to circumvent the use-requirement by simply disguising a re-filed EUTM through merely adding additional goods or services.

Following the criteria established in the Lindt case, consideration must also be taken of the applicant’s intention when filing the EUTM. In determining this intention, the Board placed weight on the oral hearing where the EUTM proprietor mentioned that “it was not unusual for companies to file further applications for trade marks already the subject of existing EU registrations and include in those new applications goods or services included in the earlier trade mark filings”.

On this point, the Board established that the simple fact that other companies may be using a specific filing strategy does not make that strategy legal and acceptable, especially if the lawfulness of such a practice has not been tested and approved before the Courts. Thus, when such strategy is used with the intention of circumventing the obligation to prove genuine use of the mark, it is not a legitimate business activity or follows commercial logic. On the contrary, is incompatible with the objectives pursued by the EUTMR and may be considered as an ‘abuse of law’.

Consequently, the Board invalidated the ‘Monopoly’ mark for all goods and services identical or similar to those covered by the earlier trade marks. It allowed the mark to remain on the register for the goods and services not covered by the earlier marks.

This decision highlights the risks associated with the rather common practice of re-filing the same trade mark for the same goods and services. The case also builds and develops on the EUIPO and courts’ approach to bad faith and re-filings of trade mark applications.