In Hasbro v EUIPO, the General Court has upheld the EUIPO Board of Appeal's finding that so-called "re-filed" trade marks may be bad faith applications, subject to certain conditions. In a case fittingly concerning Hasbro's MONOPOLY trade mark, the General Court held that, when a trade mark applicant files a mark that is identical to an existing registration, and which covers identical goods/services as the earlier mark, the application will be filed in bad faith if the applicant's intention at the time of filing was to artificially extend the grace period for establishing use.
Whilst the decision turns to a large extent on Hasbro's evidence submitted to the EUIPO, and may be the subject of an appeal to the European Court of Justice (CJEU), it raises a number of issues for brand owners to consider in relation to both protection and enforcement of their marks. As the General Court's decision post-dates the end of the Brexit transition period, it is not binding on the UK courts or UKIPO, but they may take it into account.
Hasbro's Monopoly board game needs no introduction. At the time the registration in question was filed in 2010 (EUTM No. 9071961 – 'the Registration'), Hasbro already owned a number of EUTMs for the word mark MONOPOLY collectively covering goods and services in classes 9, 16, 25, 28 and 41, dating back to 1996. It subsequently filed the Registration for goods and services in classes 9, 16, 28 and 41 – including terms covered by the earlier registrations, plus additional terms – which was registered on 25 March 2011.
Following an attempt to enforce the Registration against an application for DRINKOPOLY filed by the Cancellation Applicant (Kreativni Dogadaji), Hasbro found itself defending EUIPO invalidity proceedings alleging that it had filed the Registration in bad faith. In particular, the Cancellation Applicant argued that the Registration was a repeat application, filed with the dishonest intention of circumventing the obligation to prove genuine use.
The EUIPO Cancellation Division rejected the application for a declaration for invalidity. It found that there was no evidence that Hasbro acted in bad faith, and that protecting the same mark through multiple filings over a period of 14 years was not, per se, evidence of an intention to evade the genuine use requirements. But following a rare oral hearing, the EUIPO Second Board of Appeal overturned this decision (see our coverage here). It held that Hasbro had the intention of improperly and fraudulently extending the five-year grace period and that, to the extent that the Registration covered goods/services covered by the earlier marks, it had been filed in bad faith and it was invalidated for those goods and services.
General Court decision
The General Court has now upheld the Board of Appeal's decision. Much of its decision appears to turn on Hasbro's evidence pertaining to its filing strategy. In particular, Hasbro had cited a number of legitimate factors, such as the need to protect expanding commercial interests and product offerings, for licensing relationships and opportunities and to reflect evolving trade mark filing and specification practice. It had pointed out that the MONOPOLY trade mark is very well known and evidence of actual use had been filed. However, it did acknowledge that there is an administrative benefit in being able to rely upon later marks without the need to prove use (and the associated expense of producing evidence).
While Hasbro reiterated that this was one of many factors to be taken into account – and not the sole purpose of it filing the Registration – this admission appears to have been central to the General Court's decision. It held that Hasbro's intention was to take advantage of the rules of EU trade mark law by artificially extending the grace period for non-use. The fact that Hasbro could actually have proven use was irrelevant. The Court rejected Hasbro's argument that the practice of filing multiple registrations for the same mark is accepted industry practice; saying that this was conjecture, and even if so, the fact that other companies engage in a certain filing strategy does not make that strategy acceptable. The General Court concluded that Hasbro had sought to circumvent a "fundamental rule" of EU trade mark law in order to derive an advantage, to the detriment of the system.