Trademark Re-filings Deemed Bad Faith By The EU In MONOPOLY Case

• Published date: 07 December 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: aera
• Author: Philippe Benjamin Skow and Monika Colak

In landmark "MONOPOLY" case, EU vetoes re-filings of trademarks to prevent circumvention of the proof of use requirement.

SUMMARY

Hasbro, the American toys and board games conglomerate, famous for its board game MONOPOLY, has recently lost a landmark EU case. A decision by the European Union Intellectual Property Office (EUIPO) was upheld, leaving Hasbro's EU trademark for "MONOPOLY" partially invalidated on the grounds of bad faith. The ruling is a major development concerning bad faith within trademark law.

THE EU LAW IN QUESTION

Within trademark law, an owner of a trademark must be able to prove that he or she has actually used the trademark within a certain period of years. If this cannot be proved, the owner may risk having the trademark invalidated. If the owner has re-registered a trademark in bad faith, the registration may get invalidated.

THE CASE

In 2011, Hasbro registered an EU trademark for the word "MONOPOLY". Years before, Hasbro registered three other EU trademarks for the same word in the same classes for goods and services.

In 2015, a Croatian board game company, which owns a board game called "DRINKOPOLY", filed a cancelation case against Hasbro's 2011 registration of "MONOPOLY". This on the basis that the mark "MONOPOLY" was invalid because Hasbro had acted in bad faith when filing the 2011 application. The Croatian company claimed that Hasbro's application was a so-called "re-filing" of earlier registrations from 2009 and 2010 and that the main purpose of this re-filing was to circumvent the requirement of proof of use. The re-filing was therefore made in bad faith, the company claimed.

At first, EUIPO rejected the cancellation request from the Croatian company. However, after the company appealed the decision, the Board of Appeal decided that Hasbro had indeed acted in bad faith. The Board of Appeal therefore partially cancelled the 2011 registration. Hasbro appealed to the EU General Court.

THE FINAL OPINION OF THE GENERAL COURT

The Court firstly reminded on a general note that the aim of trademark law is to facilitate a system of free competition. Secondly, that in order to determine bad faith, account must be taken of: i) whether a trademark registration is abusive or contrary to honest commercial practices, ii) the commercial logic underlying the filing of the application and iii) the chronology of events leading up to the filing.

The Court confirmed...