General Court Upholds Partial Cancellation Of Hasbro's Monopoly Trade Mark For Refiling In 'Bad Faith'

• Published date: 11 June 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wiggin
• Author: Mr Peter Dawson

Hasbro, the publisher of the famous MONOPOLY board game, has had one its re-filed EU trade marks partially invalidated on the grounds of bad faith on the basis that it constituted 'evergreening'.

The rather nebulous concept of 'bad faith' is not defined in applicable EU trade mark legislation and is therefore something of a hot topic following a recent line of cases that have sought to develop the doctrine. It intends to prevent abuse of the trade mark system.

This case focussed on the practice of 'evergreening', which is the re-filing of a trade mark so as to continue to benefit from successive 5 year 'grace' periods during which the registration is not subject to challenge on the grounds of non-use.

Background

Cancellation Division

Kreativni Dogadaji, a Croation board game company, filed an EU designation for a DRINKOPOLY logo for various games in Class 28.

Hasbro opposed that application based on its rights in MONOPOLY, including one EU registration that was filed in 2010 and registered in 2011. At the relevant date, this registration (which is one of many that Hasbro owns for MONOPOLY in the EU, some of which date back to 1996) was within the 5 year 'grace period' which meant that Kreativni Dogadaji could not therefore (i) request proof of genuine in the context of the opposition and/or (ii) file a retaliatory cancellation action based on non-use.

However, Kreativni Dogadaji filed a retaliatory invalidity action against the 2011 registration on the grounds that it was filed in 'bad faith'. It argued that in applying for that mark, Hasbro's purpose had been to improperly and artificially extend the grace period applicable to its MONOPOLY mark, so as to avoid having to show use for its older registrations when taking action against conflicting trade mark applications with the '-opoly' suffix. In defence, Hasbro argued it filed the 2011 application to cover an expanded range of products to reflect developments in its business and, even if use had been required to be proven in relation to goods and services also covered by its earlier MONOPOLY registrations, it would have no problem doing so.

The EUIPO initially sided with Hasbro with the Cancellation Division holding that the evidence filed by Kreativni Dogadaji, primarily register extracts showing the filing pattern and unilateral statements made by Hasbro, was not sufficient to discharge its burden to prove bad faith and, therefore, rejected the invalidity challenge.

Board of Appeal

Kreativni Dogadaji...