Date: 15 October 2019
The Board of Appeal’s decision in MONOPOLY together with the decision in the SKYKICK case (in the pipeline at the time at writing) have the potential to change trade mark practice in Europe regarding bad faith applications. A five year grace period from registration is usually given to trade mark owners, during which time they can enforce their mark against third parties, without having to prove that they have used their mark in trade. Some brand owners will reregister their trade marks during the grace period, in order to re-set the clock. But is this common practice fair play?
In case R 1849/2017-2, a Croatian company called Kreativini Dogadaji applied to revoke Hasbro’s famous MONOPOLY trade mark. Kreativini argued that Hasbro had filed the challenged EUTM repeatedly and therefore that it had a dishonest intention at the time of filing. According to Kreativini, registering a trademark and then periodically re-registering an identical trademark could serve to improperly and fraudulently extend the five year grace period indefinitely to evade the legal obligation of proving genuine use and the corresponding sanctions.
Therefore, Kreativini claimed, Hasbro’s filing was made in bad faith and couldn’t be invoked to evade the corresponding sanctions. Kreativini also contended that the contested EUTM had been filed with the sole intention of artificially extending the 5 year grace period of its previously registered MONOPOLY EUTMs which were protected for identical goods and in the same territory and to circumvent the use requirement of the marks in opposition proceedings.
At first instance, the EUIPO’s Cancellation Division rejected Kreativini’s application for a declaration of invalidity. However, that decision was overturned by the Second Board of Appeal, who found that Hasbro had acted in bad faith when it filed the application, given that it covered identical and similar goods and services to their earlier registration for the same mark. Contrary to the reasoning provided by the Cancellation Division, the assertions made by Kreativini that the EUTM under attack was made in order to extend a non-use period were even confirmed by Hasbro themselves and hence were far from being mere speculation.
This decision should be viewed as a warning that brand owners may need to reconsider protection and enforcement strategies.