Contributors
The practice of a business re-filing to register a trade mark which is identical, or highly similar, to a pre-existing registration owned by the same business – known as "evergreening" – has recently come under the scrutiny in the European Union ("EU") again, in the case of Hasbro Inc v EUIPO[1].
In the case, the EU General Court held that Hasbro had acted in bad faith when it filed the contested EU trade mark ("EUTM") for MONOPOLY, because it had done so in order to take advantage of certain protection offered to new trade mark registrations. Under EU (and UK) trade mark law, a trade mark owner is given a grace period of five years following registration in which to commence use of the mark. During this grace period, the registration is protected from challenge by third parties on the grounds of non-use and, as a result, the registration's owner will not usually be required to prove genuine use of the mark in contentious proceedings, such as opposition or infringement actions.
In re-filing for EUTM protection, Hasbro was held to have artificially created a situation in which it would not have to prove genuine use of its earlier registrations for certain goods and services (by relying on the later contested registration), thereby shielding them from challenge. The EU General Court found Hasbro's conduct to be the result of an intention to distort and unbalance the system of EU trade mark law, and went on to partially invalidate Hasbro's later contested registration for goods and services (including games and entertainment) which were covered by Hasbro's earlier registrations.
This decision will likely have come as a shock to Hasbro given that, in its submissions, it suggested that re-filing was common practice. The apparent popularity of the tactic did not persuade the EU General Court to rule in Hasbro's favour and, indeed, previous case law on the subject suggests owners should be cautious relying on repeat filing to protect their registrations.
Is re-filing a legitimate strategy?
Repeat filings can have genuine commercial advantages for trade mark owners and the courts have previously suggested that it could be, in certain circumstances, a legitimate business practice. They may be considered prudent where:
- Earlier specifications covering narrower goods and services need to be broadened or clarified
- Numerous earlier registrations could be consolidated, which may reduce the cost and administrative burden associated with maintenance of trade mark portfolios
- Companies want to protect variations of an evolving brand.
For example, in Pelikan[2], where an EUTM owner's logo had evolved, this was held to be a legitimate cause for re-filing. Further, it was acknowledged that, since the contested EUTM covered goods and services designated by two earlier EUTMs, a possible reason for the re-filing was to avoid the need to renew two separate marks going forward.
Still, "evergreening" has attracted much debate at the EU Intellectual Property Office ("IPO"), as clearly the existence of the non-use grace period can create an unfair monopoly on potentially unused marks, undermining the interests of third parties as well as the system for protecting trade marks. In the context of EUTMs, this is compounded by the fact that, unlike some other territories (such as the UK), the EUIPO does not require applicants to confirm when filing that they have a bona fide intent to use the trade mark for which they have applied.
It is established that the act of re-filing itself is not sufficient to amount to a finding of bad faith on the part of the applicant, and dishonest intent is required. Therefore, the starting position is a presumption of good faith until proven otherwise. The EU General Court stated [paragraph 43] that:
"Where [the] EUIPO find that the objective circumstances… lead to the rebuttal of the presumption of good faith which the proprietor… enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark."
Should the burden shift to the trade mark proprietor, they may be required to prove use of trade mark, or at least a cogent explanation for pursuing its registration, even whilst within the usual grace period.
Why did Hasbro lose its registration?
Factors that led the EUIPO Board of Appeal to find Hasbro's repeat filing of its earlier marks was indicative of bad faith (with which the EU General Court agreed, on appeal) included:
- Hasbro had relied on the contested EUTM in opposition proceedings.
- Hasbro had not surrendered any of its earlier trade marks. Hasbro suggested the reason for the re-filing was to reduce administrative burden but, without surrender of the earlier registrations, repeat filings could only be said to increase the investment and resources needed.
- One of Hasbro's witnesses admitted that the strategy gave Hasbro the advantage of not having to prove genuine use of the refiled trade mark in opposition proceedings. The witness added (perhaps to Hasbro's detriment) that Hasbro considered this advantage when it filed the application, and that there was no other commercial logic to the strategy.
- As mentioned above, Hasbro argued that the repeat filing strategy was normal industry practice, implying that the strategy was intentional.
Point 3 above, in particular, seems to have sealed Hasbro's fate; by its own admission, it had no other good reason for adopting the strategy. This seems to have greatly impacted the Board of Appeal's decision (and that of the General Court) that Hasbro had filed the application in bad faith, likely worsened by the suggestion that the practice is widespread.
What other factors might indicate bad faith when re-filing?
Although Hasbro's explanation of its motivations was not persuasive in these proceedings, a review of the case law reveals that where bad faith will be found – particularly on the issue of surrender of earlier registrations – is not always easy to determine.
That being said, the decision in Pathfinder[3] is hardly surprising. The EU Board of Appeal found that the opponent (EUTM owner) had acted in bad faith when they re-filed for an identical mark for identical goods, underpinned by a wish to avoid of cancellation of the re-filed mark for non-use, after abandoning their earlier rights after five years of registration. Additionally, it transpired that, rather brazenly, the opponent had offered to sell the re-filed mark to the counterparty in the proceedings. The Board of Appeal had little trouble finding that the sole purpose of obtaining the later registration was to artificially prolong the grace period. As a result, the opponent was invited to provide proof of use of the re-filed mark, despite it having been registered for less than five years and, as no proof of use was provided, the opposition was rejected as unfounded.
Whereas in Aldi v Sky[4], in which Sky plc ("Sky") relied on later registrations despite not having surrendered earlier registrations for the same marks (as occurred in Pathfinder), Aldi GmbH ("Aldi") was unable to persuade the EUIPO, the Board of Appeal or the EU General Court that Sky had acted in bad faith. The EU General Court agreed with the Board of Appeal and held that Aldi's proof of use request was inadmissible, on the basis that Sky's later registrations were not identical re-filings, Sky had used its trade marks (in line with the evidence filed), and Sky demonstrated that it had a legitimate interest in its re-filings, in contrast to the bad faith that had clearly occurred in Pathfinder.
Lessons
It is important for applicants to consider and record clearly the commercial reasoning behind each trade mark application – whether or not a re-filing – so a clear audit trail is established, to assist in fending off any future challenges on the basis of bad faith. Where an applicant cannot justify any commercial logic underpinning the re-filing (beyond "evergreening"), this is likely to indicate the registration (if achieved) could be vulnerable to challenge later on.
Although the UK is no longer bound to follow decisions of the EU legislature, an interesting scenario may develop given that bad faith is a ground not only for invalidation, but also for opposition, at the UKIPO. Could this decision open the floodgates to more bad faith oppositions (or invalidations) in the UK, where brand owners with a large portfolio have adopted a strategy of repeat filings (at least, until now)? Could an applicant be expected to prove use (more similarly to the US system), or should the declaration of bona fide intent made by applicants maintain or support the presumption in the applicants' favour, even where it is a repeat filing?
It seems likely that the circumstances in which the EUIPO (and UKIPO) will be prepared to find bad faith on the part of an applicant for a trade mark registration will continue to evolve. What is clear is that the position will need to be assessed on a case-by-case basis, and re-filing simply to have the comfort of an additional grace period is off the table – at least at the EUIPO.
Contribution by Olivia Graham, Trainee Solicitor.
[1] 21/04/2021, Case T‑663/19, ECLI:EU:T:2021:211.
[2] 13/12/2012, T-136/11, Pelikan v OHIM, EU:T:2012:689
[3] 15/11/2011, R 1785/2008-4, PATHFINDER (fig.) / MARS PATHFINDER.
[4] 19/10/2017, Case T-736/15, Aldi GmbH & Co KG v Sky plc, SKY / SKYLITE (fig.)
