The EUIPO Board of Appeal declared Hasbro Inc.’s re-filing of its MONOPOLY word mark invalid due to bad faith. The Board confirmed that the strategy of repeated filing of a mark for identical goods and services, which is intended at evading the requirement to genuinely use such mark, constitutes bad faith.
By applications filed in the period 1996-2010 Hasbro, Inc. registered the word mark MONOPOLY as EU trademark for different classes of goods and services. Later on, Hasbro, Inc. re-filed a new EU trademark application seeking to register the same word mark MONOPOLY for goods and services essentially covering the ones comprised by its earlier marks.
In 2015 the Croatian company Kreativni Dogadaji d.o.o. applied for declaration of invalidity of the re-filed MONOPOLY trademark of Hasbro, Inc. The invalidity applicant argued that Hasbro, Inc. in fact performed a repeated filing of its earlier EU trademarks with a dishonest intention. According to the invalidity applicant, since the earlier EU trademarks of Hasbro, Inc. were subject to potential revocation or requests for proof of use, the re-filing was aimed at evading the legal obligation of proving genuine use.
Pursuant to the EU Trade Mark Regulation a trade mark shall be declared invalid where the applicant acted in bad faith at the time of filing the application for the trade mark. Further, the regulation provides that the rights of the proprietor of the EU trade mark shall be revoked if, within a continuous period of 5 years, the trade mark has not been put to genuine use in the EU in connection with the goods or services for which it is registered, and there are no proper reasons for non-use. The same obligation of use applies in opposition and cancellation proceedings where the proprietor of the contested mark may be required to prove use of its mark, provided that such mark has been registered for at least 5 years.
Game (Not) Over
In its decision, the Second Board of Appeal first relied on the general principles of EU trademark law aimed at enhancing undistorted competition and free movement of goods and services by providing trademark rights. However, as the Board noted, the protection of EU trademarks is justified only where the trademarks are actually used. According to the Board, a trademark, which is not used could obstruct competition by limiting the range of available signs and by denying competitors the opportunity to use that trademark or a similar one for identical or similar goods and services. The ratio legis for the use requirement, in the Board’s view is, to prevent the granting of a legal monopoly for an unlimited period to an inactive trademark owner.
Turning to the specifics of the case, the Board first took into account that Hasbro had on three previous occasions already filed and successfully registered MONOPOLY as an EU trademark since 1996. The Board then proceeded to comparing the goods and services of the earlier marks and the contested mark and noted that the contested mark covers a wider scope of goods and services. In general, the Board stated, applying for a larger variety of goods and services which might be of interest in the near future is a common and legitimate practice which has an acceptable commercial logic. However, the Board noted, the contested EU trademark of Hasbro, Inc. also contained numerous goods and services which are simply a repeat of the earlier, already existing EU trademarks. For those repeated goods and services the Board confirmed that it is not acceptable that the trademark owner circumvents the use requirement by disguising a re-filed mark through merely adding further goods and services. Thus, the Board concluded that by repeatedly filing the same mark for identical goods and services and thereby protecting the mark over a period of fourteen years, the EU trademark owner improperly and fraudulently extended the five-year grace period in order to evade the legal obligation of proving genuine use of the mark and the corresponding sanctions.
No monopoly on MONOPOLY
The case also involved a rather unusual oral hearing before the Board. In the course of the hearing the EU trademark owner mentioned that it was not unusual for companies to file further applications for trademarks already the subject of existing registrations and include in those new applications goods or services included in the earlier trade mark filings. The EU trademark owner tried to argue that such repeated filing was done “for a number of reasons that may make our lives easier in terms of administration”. The Board did not give weight to those arguments, stating in particular that the administrative burden and costs are not decreased, but to the contrary – increased in case of amassment of several identical marks.
Most importantly, during the oral hearing the EU trademark owner’s witness stated that “being able to rely upon one registration without the need to prove use” was a benefit to the trademark owner and that it was something that was “considered by all brand owners and in many different industries”. On this point, the Board stated that the fact that other companies may be using a specific filing strategy does not make that strategy legal and acceptable, especially if the lawfulness of such a practice has not been tested and approved before the Courts. Thus, when such strategy is used with the intention of circumventing the obligation to prove genuine use of the mark, it is not a legitimate business activity and does not follow commercial logic. Consequently, the Board invalidated Hasbro Inc.’s MONOPOLY mark for all goods and services identical or similar to those covered by its earlier trademarks.