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Editorial

Re-filing Trademarks: A Case of Déjà Vu?

September 2019 - Intellectual Property. Legal Developments by Gauci-Maistre Xynou.

More articles by this firm.

Trade marks give a face to a product which enable us identify a brand. As consumers, we take them for granted even though they punctuate memories of our daily lives. How many of us ever think of the creative and strategic thinking that goes into their composition? In contrast, we are more familiar with trade mark infringement. And what is breaking news are the risks of re-filing new applications for the same trade mark that should not be glossed over. 

Why would a trade mark proprietor re-file for the same trade mark?

The proprietor of a European Union trade mark (EUTM) or of a locally registered trade mark should lose its rights in that trade mark if it is not put to genuine use, referred to as “non-use”. In effect, this entails:

  1. That the proprietor would no longer be able to prevent the registration of the same trade mark by others;[1]
  2. That others may file an application to the European Union Intellectual Property Office (EUIPO) or to the Civil Court, First Hall of Malta, as the case may be, for the revocation (from the date of request) of the proprietor’s rights;[2]
  3. That the proprietor would no longer be able to successfully sue for trade mark infringement since the infringer would always have the right to file a counterclaim for revocation of the proprietor’s rights.[3]

Nevertheless, proprietors are given a 5-year grace period since registration, to use their trade mark and it is only after the expiration of that term that the listed adverse consequences can take effect. Therefore, proprietors often file an application to register the same trade mark which they had previously registered so as to extend the grace period by an additional five years; and so on, for as many times as a new application is re-filed.

Is such a re-filing practice lawful?

In a recent case the Board of Appeal of the EUIPO invalidated (that is, removed from the trade mark register with retroactive effect) the EUTM ‘Monopoly’ precisely for being made within the context of this re-filing practice.[4] The toy and board game company Hasbro had successfully registered the ‘Monopoly’ trade mark on three previous occasions before the contested registration, each time for a different class of goods and/or services. On the fourth contested application, Hasbro filed to register the same trade mark for the same classes of goods and/or services as the three previous registrations as well as for additional classes not covered by any of the previous registrations.   

The Board of Appeal distinguished between re-filing for the same trade mark for the same class of goods and/or services, on the one hand, and re-filing for the same trade mark for new classes of goods and/or services on the other. With regards to the latter, the Board of Appeal held that simply expanding your trade mark to cover further goods and services in which the proprietor is interested to expand his business is an accepted commercial practice. After all, a business must be allowed to grow.[5] However, re-filing the same trade mark for the same goods and/or services as a previously registered trade mark, which has been renewed and is still actively used, cannot be made to circumvent the genuine use requirement.[6] Such a registration is made in bad faith and is therefore liable to be invalidated by the EUIPO, in the case of an EUTM, or by the Civil Court, First Hall of Malta in the case of a locally registered trade mark.[7]

On this basis, the Board invalidated the latest registration of the ‘Monopoly’ mark only for those goods and services for which an identical mark had already been registered. For those goods and services which had never been the subject of a registration, the ‘Monopoly’ mark remains valid.

How can a proprietor avoid invalidation of a trade mark?

As already considered above, if a proprietor intends to expand its business, it is perfectly legitimate to seek the registration of an existing trade mark for further goods and/or services which previous trade mark registration do not cover. Even so, a proprietor may be concerned with the administrative bother of having various registrations for the same mark but for different classes of goods and/or services, especially vis-à-vis licensing and enforcement. That a proprietor may want to group all the goods and services in respect of which it is operating or intends to operate under one registration is understandable. In this case; however, the proprietor should surrender all the previous trade marks so as to make clear that the re-filing is not done in bad faith but is solely motivated by reason of genuine business expansion and administrative reasons.

Is there any risk associated with rebranding?

There are various types of trade marks that can be registered. Arguably, the simplest form is a “word mark”, made up of letters or numerals. However, there are also “figurative marks containing word elements”, that is, combination of words and graphic features. What if a proprietor first registers a word mark, and then registers a new trade mark for the same goods and/or services containing the same word but adding a figurative feature, and then registers a new trademark with a new or different figurative feature but retaining the same word? Is this simply a case of rebranding or is it a case of re-filing essentially the same trade mark in bad faith?

Conclusion

 The EUIPO seems to have taken a tougher stance on trade mark proprietors attempting to “extend” the extent of their right in bad faith. The national intellectual property offices of the Member States are likely to follow suit. Therefore, some special consideration attention must be given to re-filing trade marks especially for proprietors who operate an expanding business and need to update their trade mark portfolio from time to time.

[1] Regulation (EU) 2017/1001, Art. 47(2); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 51.

[2] Regulation (EU) 2017/1001, Art. 58(1)(a); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 29.

[3] Regulation (EU) 2017/1001, Art. 58(1)(a); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 27.

[4] Decision of the Second Board of Appeal of 22 July 2019, Kreativni Dogadaji d.o.o. v. Hasbro, Inc. (R 1849/2017-2), <https://euipo.europa.eu/eSearchCLW/#basic/*///number/1849%2F2017>.

[5] Ibid, para. 63-64.

[6] Ibid, para. 66-74.

[7] Regulation (EU) 2017/1001, Art. 59(1)(b); and Trademarks Act (Chapter 597 of the Laws of Malta), Art. 5(2).

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