In a recent decision, the Board of Appeal at the European Union Intellectual Property Office (EUIPO) partially invalidated a European Union Trade Mark (EUTM) registration for MONOPOLY.
Trade mark owners have a five year grace period from registration, during which they can rely on the mark without needing to prove they have used it. Once this period has expired, owners may be required to provide evidence that they have used the mark in trade, in order to enforce it against third parties. Hence why it's common practice for some brand owners to re-file trade marks to reset this grace period.
Playing to the rules?
In this case, Hasbro owned EUTM registrations for MONOPOLY dating from 1996 and 2008. In 2010, they filed a new application for MONOPOLY covering a broad range of goods and services, some of which were identical and similar to their earlier registrations.
Kreativni Dogadaji (Kreativni), a Croatian company behind the Drinkopoly board game, applied to invalidate the 2010 registration on the grounds that it was a repeat filing of the earlier EUTM registrations.
Following an unsuccessful first action, Kreativni took the case to the Board of Appeal (the Board).
As Hasbro's 2010 registration covered identical and similar goods and services to their earlier registrations for the same mark, the Board found that Hasbro acted in bad faith when it filed the 2010 application. In fact, Hasbro admitted one of the reasons for re-filing the mark was to avoid having to prove its use in opposition proceedings.
Consequently the Board invalidated the 2010 MONOPOLY registration for all goods and services that were identical or similar to those covered by the earlier registrations.
A game changer
Re-filing applications to avoid a five year non-use requirement is a common issue facing brand owners and practitioners, and one which also clutters the EU trade mark register.
This ruling, together with the impending decision in the SKYKICK case, has the potential to change the trade mark landscape in Europe, particularly concerning bad faith applications. It should be seen as a warning to brand owners and advisors, that they may need to rethink their protection and enforcement strategies.
This is one of many factors brand owners need to take into account when considering how they can best protect and enforce their brands. If you would like to find out more about how we can help you, please get in touch.
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