Water Works For Hasbro As EU Court Limits Monopoly Monopoly

• Published date: 11 May 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Stevens & Bolton
• Author: Ms Astrid Arnold

The EU's second highest court has cut down the scope of Hasbro's European Union MONOPOLY trade mark on the basis that it was re-filed in bad faith¹. Trade mark owners should review their filing strategies to avoid the risk of invalidity due to re-filing.

What did Hasbro do?

The court found that Hasbro had sought to avoid the consequences of the non-use provisions by re-filing some of its earlier trade marks. This refers to the "use it or lose it" principle that is fundamental to trade mark law and which provides that a trade mark will normally become vulnerable to cancellation if it is not put to genuine use within five years. This rule gives trade mark owners an initial grace period of five years within which they can pursue infringers and oppose later third party trade mark applications without needing to demonstrate use. After that, use must be proved. However, re-filing gives the trade mark owner a fresh, five-year grace period from the date of re-filing.

Why brand owners re-file

Even where there has been genuine use of the mark, re-filing can save costs and administrative effort in proving use. It is also often done in order to obtain a broader, more up-to-date, specification of goods and services consolidating several earlier registrations.

Bad faith

The court held that re-filing does not automatically constitute bad faith but that bad faith may arise where the intention is to avoid having to prove use. It rejected Hasbro's argument that the object of the re-filings was to reduce administrative burdens. An argument that the practice was common industry practice was also rejected as irrelevant. These findings suggest that demonstrating that the intention was not to avoid the non-use provisions is likely to be an uphill struggle in future cases.

Impact for trade mark owners

Subject to any appeal to the European Court of Justice (CJEU) the consequence of the decision for Hasbro is, broadly, that its re-filed trade mark for MONOPOLY is invalid to the extent that it repeats the earlier trade mark specifications. These earlier trade marks should remain valid to fill...