The EU General Court has upheld the EUIPO Board of Appeal decision in the MONOPOLY trade mark case.
This is a long anticipated and important decision which will have an impact on trade mark portfolios in the EU and beyond. In essence, the EU has ruled that it is not permissible to refile the same or a similar trade mark within the 5 year grace period during which non-use requirements do not apply.
What happened?
Hasbro filed an EUTM application for MONOPOLY, covering various goods and services in classes 9, 16, 28 and 41, in April 2010 and the mark was registered in 2011. The company also owned three earlier EU word marks for MONOPOLY, which were registered in 1998, 2009 and 2010, which covered some of the same goods and services.
A Croatian company, Kreativni Događaji, filed an invalidity action against the latest registration, arguing that it was a “repeat filing” of the earlier marks and “was aimed at circumventing the obligation to prove genuine use of those marks”. Following a rare hearing, the EUIPO Second Board of Appeal declared the EUTM invalid to the extent that it covered the same goods and services as the previous marks. It said Hasbro had acted in bad faith when it filed the application.
In April 2021, the EU General Court rejected Hasbro’s appeal and upheld the Board of Appeal's, finding that Hasbro had “intentionally sought to circumvent the proof of use rule to derive an advantage”.
It confirmed there is no prohibition on re-filing trade marks as such, but in this case “the aim of the applicant’s repeat filing was, inter alia, by its own admission, that of not having to prove use of the contested mark, thus extending, with regard to the earlier marks, the five-year grace period”. Specifically, it had gained an advantage in two sets of opposition proceedings.
Notably, before the Board of Appeal a member of Hasbro’s staff had testified that “being able to rely upon one registration without the need to prove use” was a benefit of refiling.
Hasbro’s claim that the repeat filings were designed to reduce its administrative burden was not persuasive given the additional costs and burden of maintaining the earlier marks covering overlapping goods and services. And the Court rejected Hasbro’s argument that re-filing was normal practice before EUIPO.
The Court also found against Hasbro on a minor point concerning the classification of the goods: it agreed with the Board of Appeal that “gaming machines; slot machines; playing cards” covered by the contested mark were identical to “games and playthings” covered by one of the earlier marks.
What does this mean?
The decision is the latest of several addressing bad faith, including last year’s CJEU judgment in the SkyKick case. Whilst it provides reassurance that refiling trade marks is not automatically prohibited, it is a reminder that the motivation for the refiling will be scrutinised for evidence of bad faith.
To find out more about the issues raised in this case including trade mark disputes and filing contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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