In Hasbro Inc. v EUIPO (Case T‑663/19) the General Court of the EU upheld the earlier decision of the Second Board of Appeal that Hasbro’s MONOPOLY mark registered in March 2011 was invalid in respect of the goods and services covered by the earlier marks, including ‘games and playthings’. It determined that Hasbro had acted in bad faith when filing the application for the contested mark. This determination was largely based on Hasbro’s admission that it had filed the application to circumvent the need to prove genuine use of the earlier marks after 5 years (a practice known as 'evergreening').
Background
On 30 April 2010, Hasbro, Inc. the well-known game producer, filed an application for registration of an EU trade mark MONOPOLY in Classes 9, 16, 28 and 41. The mark was registered in 25 March 2011. On 25 August 2015, the intervener, Kreativni Događaji d.o.o., a Croatian board game producer, filed an invalidity action against the contested mark under Article 52(1) (b) of Regulation No 207/2009 on the basis that the applicant had been acting in bad faith at the time of filing the application. They argued that the contested mark was a repeat filing of two of Hasbro Inc.’s earlier marks and it was filed to circumvent the obligation to prove genuine use of those earlier marks after 5 years. The case was initially rejected by the Cancellation Division of the EUIPO but the Board of Appeal held that the filing had been made in bad faith in respect of the identical goods to the earlier filings and the mark was partly invalidated. Hasbro appealed the decision to the General Court.
The General Court’s decision
On appeal, the General Court confirmed that:
- The concept of bad faith cannot be confined to a limited set of circumstances but instead the specific context of each case must be examined.
- To determine whether a filing was made in bad faith, account may be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing.
- Consideration must also be given to the trade mark applicant’s intention at the time when he or she filed the application for registration which should be determined by reference to the objective circumstances of the particular case.
- The onus of proof that a filing was made in bad faith must be met by the applicant for the declaration of invalidity. However, once the presumption of good faith of the applicant is rebutted, it is up to the proprietor of the trade mark to present evidence of legitimate intentions at the time of the application.
The General Court then examined the factors which led the Board of Appeal to find that the repeat filing of the earlier marks was indicative of bad faith, including:
1) Hasbro had relied on its earlier marks and the contested mark in 2 opposition proceedings, and they had succeeded on the basis of the contested mark as it had not been necessary to prove genuine use.
2) Evidence was provided in oral hearing before the Board of Appeal by a person working at Hasbro Inc. that the refiling resulted in less administrative burden. This argument was found to be unpersuasive since the earlier marks had not been allowed to lapse which would mean additional costs and administrative burden of continuing to maintain the earlier marks.
3) It was also submitted in evidence by a representative of Hasbro Inc. that an application for registration of the mark MONOPOLY had intentionally been re-filed so that it also covered goods and services which were already covered by the earlier mark and they had admitted that the advantage of that strategy was that it would not have to prove genuine use of the contested mark in opposition proceedings.
4) It was also argued at the hearing that this re-filing strategy was normal industry practice and this was held by the Board of Appeal to imply that using such a strategy was intentional.
The General court concluded that the Board of Appeal had correctly taken all of the relevant circumstances into account when determining whether the filing was made in bad faith and dismissed the appeal.
Commentary
The court found that the act of refiling an identical mark for identical goods and services would not per se establish a finding of bad faith. However, it was the intention at the time of a repeat filing which was central to this determination. Therefore, it will be important to have an acceptable justification for refiling in this manner in order to avoid a finding of bad faith.
The case highlights the issues faced by brand owners in trying to protect and enforce their marks over time. It is important to have a considered filing strategy and retain evidence of genuine use of your marks, rather than relying on evergreening.
If you would like any further information please contact Emily Roberts, Alison Brennan or your usual intellectual property team contact.
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