Why Hasbro's Bad Faith Game 'Did Not Pass Go'

• Jurisdiction: European Union
• Law Firm: Katten Muchin Rosenman LLP
• Subject Matter: Intellectual Property, Trademark
• Author: Ms Sarah Simpson
• Published date: 10 February 2023

The article analyzes the reach of the precedent-setting case of Hasbro Inc. v. European Union Intellectual Property Office (EUIPO), which centered on whether the practice of "evergreening" - the refiling of identical trademarks - can constitute an act of "bad faith." In a ruling released in April 2021, the EU General Court determined that Hasbro acted in bad faith through repeat filings for the MONOPOLY trademark because the board game conglomerate's intention was to avoid showing genuine use of the mark.

The Hasbro dispute originated before the EUIPO's Cancellation Division, where the case was initially rejected. On appeal, the EUIPO Board of Appeal partially invalidated Hasbro's EU registered trademark for MONOPOLY, which was the verdict upheld in the General Court's ruling. A key factor underlying the General Court's decision was Hasbro's admission that one of its motivations for refiling was to avoid incurring potential costs to prove genuine use of the mark.

"Whilst it is true that evergreening doesn't always mean bad faith, where it can be demonstrated that an applicant's intention for filing a trademark registration is to dodge showing genuine use of a mark more than five years old, then bad faith may be established. When Hasbro filed its MONOPOLY trademark yet again, specifying goods and services near-identical to its earlier filing, the General Court said the application was made in bad faith, as Hasbro's intention was to prolong the five-year grace period allowed for establishing use," according to the article.

Noting that the Hasbro ruling has started to...