The Judgement of the General Court declares that the strategy of repeat filing of earlier trademarks constitutes, in this particular case, a practice of bad faith.
Following this Sentence we can conclude that should there be an interest in filing successive trademarks, the commercial strategy should be fully evaluated to avoid these being considered as filed in bad faith.
Repeat filing of earlier European Union trademarks to avoid the consequences of non-use
The General Court has recently rendered a decision (case T-663/19), on April 21, 2021, which dismisses the appeal filed by Hasbro, Inc., thus confirming the decision of the Second Board of Appeal of EUIPO regarding an invalidity proceeding on the grounds of bad faith, initiated by Kreativni Dogadaji d.o.o.
In said proceedings, EUIPO had declared the contested mark MONOPOLY number 9071961 invalid for the goods and services found to be identical to the goods and services covered by the earlier word marks “MONOPOLY”, previously registered by the same owner Hasbro. EUIPO understood that this latter trademark application had been filed in bad faith, in order to evade the obligation of proving genuine use of the trademark within possible opposition proceedings.
It is important to highlight the following points of said Judgment, which confirms the previous case-law regarding this dishonest practice by EU trademark owners:
The re-filing of earlier trademarks does not reveal itself bad faith.
In this sense, the Court has understood that the re-filing of an application for registration of a trade mark cannot, in itself, establish that there was bad faith on the applicant since there is no provision in the legislation relating to EU trade marks which prohibits it. Other relevant evidence must be put forward by the applicant for a declaration of invalidity or EUIPO. In the present case, it has been proven, even from Hasbro’s own testimony, that, at the time of filing the trademark application, it was their intention to avoid having to prove its effective use, which in practice extended the five-year grace period to start using the earlier trademarks.
While Hasbro has tried to justify itself by claiming that the re-filing of earlier marks is a common practice, the Court understood that this does not necessarily make it an acceptable strategy or exclude a potential bad faith
Finally, it must be borne in mind that the existence of a relevant harm or advantage are not required for the existence of bad faith.
Good faith is presumed on trademark applicants until proven otherwise. However, the burden of proof may fall on the trademark owner, who must provide plausible explanations about the legitimate intentions of the application.
As a conclusion, we may say that should there be an interest in repeat filings over time, it shall be useful to take some time to analyze the commercial strategy and adequately document it. This will be useful in order to prove a legitimate interest in case of claims by third parties.
At INGENIAS, we are always pleased to assist you throughout the process of definition, monitoring and defense of you trademark strategy.