EU and UK trademarks have a five-year grace period after registration, during which the trademark owner can challenge (and potentially have it revoked) non-use with such goods and/or services. Some trademark owners have attempted to take advantage of this opportunity by refiling previously registered trademarks for the same goods and/or services before the five-year grace period expires as a means of extending this grace period. This is commonly known as “evergreen”.
year Hasbro and EUIPO1, the General Court upheld a decision by the EUIPO Board of Appeal that repeated trademark applications could lead to unreliable applications. While it is true that evergreening does not always indicate bad faith where it can be shown that the applicant’s intent in filing a trademark application is to avoid showing genuine use of a mark older than five years, bad faith may exist.
In legal terms, “bad faith” goes back in time and looks at the intent of the trademark owner at the time of the trademark application. If the intent is to undermine the interests of third parties or to obtain a trademark registration for reasons unrelated to the trademark itself, this may amount to bad faith. At Hasbro, the question of whether the board game conglomerate acted in bad faith was that Hasbro repeatedly filed the MONOPOLY trademark without showing genuine use of the mark.
Hasbro and EUIPO
When Hasbro refiled its MONOPOLY trademark, identifying the goods and services as identical to its previous application, the Supreme Court said the application was made in bad faith because Hasbro’s intention was to extend the five-year grace period allowed to establish use.
Although the case was initially rejected by the EUIPO Cancellation Division, the EUIPO Board of Appeal partially invalidated Hasbro’s EU registration for the MONOPOLY mark. A key factor in the General Court’s ruling upholding the EUIPO Board of Appeal was Hasbro’s admission that its reason for refiling was to avoid the costs it might incur in demonstrating genuine use of the MONOPOLY trademark.
The Hasbro This case is also a precedent in European and UK courts. However Hasbro The case arose after Brexit, which is still considered “good law” in English courts.
Recently in a dispute between two supermarket chains Tesco and Lidl2, Tesco’s unmistakable version of Lidl’s logo must be invalidated because the mark was never used and Lidl resubmitted it from time to time to avoid proving genuine use. Tesco’s counterclaim was dismissed in the High Court because Tesco had not made out a genuine case of bad faith. However, the Court of Appeal upheld Tesco’s appeal and said it could be in bad faith. This forced Lidl to clarify its intentions when issuing the label, which is appropriate Hasbro business. Tesco’s allegations of dishonesty will now be assessed in a landmark trial later this year. Brand owners and practitioners will be watching this closely and hoping for further guidance on evergreening, especially where reapplying can lead to bad faith.
year Sky and SkyKick3, the Court of Appeals held that a trademark applicant may have good and bad reasons for applying for trademark registration. However, trademark applications filed in secret should be invalidated, especially if the primary purpose of filing the application in the first place is dishonest.
Beware of bad faith!
Hasbro v EUIPO the decision has caused brand owners and trademark lawyers to be more cautious when refiling trademarks. However, it is important to note that trademark reassignment is permitted. Only when it is established that the applicant’s intent in resubmitting the mark was to comply with the requirements of use can a finding of bad faith be made.
Brands looking to refile new or existing trademarks should ensure they have a clear trademark strategy. Also consider maintaining and recording: (1) evidence of genuine use of your Marks; and (2) reasons for refiling existing trademarks.
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1 21/04/2021, Case T‑663/19, ECLI:EU:T:2021:211 (Hasbro, Inc. and European Union Intellectual Property Office)
2 Lidl Great Britain Limited and Tesco Stores Limited  EWHC 1434 (Ch)
3 Sky Limited (formerly Sky Plc), Sky International AG, Sky UK Limited and SkyKick, UK Ltd, SkyKick, Inc.  EWCA Civ 1121, 2021 WL 03131604