MONOPOLY – Trade Mark Appeal Edition

Hasbro, Inc. (Hasbro) had one of its European Union trade mark registrations for MONOPOLY struck out in part by the Board of Appeal on the basis that it was filed in bad faith. It appealed the decision before the General Court.

Background and first appeal decision

The Board of Appeal decision was originally reported in this publication in December 2019. An EU trade mark enjoys a finite grace period of five years’ non-use from the date on which it achieved registration. After that period, if and insofar as it remains unused in EU commerce and there are no proper reasons for non-use, there are consequences. One of these is that it becomes vulnerable to a revocation action for non-use and could be struck from the register where the unused goods and services are concerned. Another is that it cannot effectively form a basis of opposition before the European Union Intellectual Property Office (EUIPO) as the owner can be required to prove its use over the previous five years.

Proving use of a registered mark which is over five years old obviously requires an investment of time and cost by the registered owner. In order to avoid this, some trade mark owners reapply for the same mark periodically, thus restarting the non-use grace period for each application. The resulting registration can be used in opposition proceedings for another five-year period without proof of use. This practice of repeated filings for the same mark is called “evergreening”.

Hasbro had three EU trade registrations for the word MONOPOLY, filed respectively in 1996, 1998, and 2010. It obtained a fourth registration in 2011 for goods and services, in part identical to the previous registrations and in part for previously unregistered goods and services. A Croatian company was successful in a partial invalidity claim against the 2011 registration before the Board of Appeal on the ground that it was filed in bad faith. The registration was cancelled insofar as it covered duplicate goods previously registered under MONOPOLY. The Board of Appeal agreed that Hasbro had a dishonest intention when the 2011 application was filed, because it was a repeat filing made with the intention of resetting the non-use clock.

General Court decision

The General Court upheld the Board of Appeal decision here, with some useful clarifications along the way, including the following:

• Bad faith cannot be confined to a limited category of specific circumstances. An assessment must be made of the applicant’s intention at the time the trade mark application was filed. If this intention was for a purpose other than to engage fairly in competition by indicating the trade origin of goods or services, this will be bad faith. In this instance, Hasbro admitted in oral evidence before the Board of Appeal that its intention was partly the administrative convenience of not having to prove use of its most recently filed MONOPOLY registration.
• Repeat filings for a mark are not prohibited per se and there is a presumption of good faith on the part of the trade mark owner. The burden of proof lies with the party claiming bad faith. However, objective circumstances may lead to a rebuttal of the good faith presumption. The trade mark owner must then provide a plausible explanation for those circumstances. In this instance, despite having older registrations for MONOPOLY, Hasbro had actually relied on its most recent registration in two oppositions and did not have to prove use of it in those proceedings. It needed to provide a plausible explanation for the repeat filing and its reference to administrative convenience in oral evidence was fatal.
• Whether or not the mark has actually been used is irrelevant in assessing whether a re-filing has been done in bad faith. In this instance, MONOPOLY was refiled in relation to board games and had very clearly been used on these goods, so Hasbro was not seeking to reserve rights in an unused mark. That did not matter.
• The length of time between refilings is also not relevant in assessing bad faith. Here, Hasbro had not waited for five years (or even close) before refiling, so it was not gaining maximum advantage of resetting the clock.

Comment

The MONOPOLY decision illustrates the potential pitfalls of simply refiling the identical mark in the EU for the identical goods or services has already been registered. However, if the goods and services provided under the mark have been expanded outside the terms of the original registration, the trade mark positively should be refiled in order to protect the new range. Additionally, a refiling is often worthwhile for the same word or words if they are presented in a stylised script as the visual presentation is then protected. Finally, the same word or words can be refiled if they are accompanied by a logo because the combination of word + logo has not previously been registered. In other words, as the brand evolves, it is legitimate practice to add value to it by protecting the trade mark at each stage, provided this is demonstrably done in good faith.