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If a trademark has not been used normally: just re-register?

Can you re-register a trademark if it hasn’t been used for five years? This would allow the trademark to be declared invalid. Or does the law preclude such a repeated deposit? In the Pelican case, the General Court had already ruled in 2012 that an application may not be repeated exactly, at least not if the purpose of the identical application is to circumvent the rules for use. In the MONOPOLY case, the Board of Appeal has now nuanced that view.

The EUIPO Board of Appeal decided in an invalidity procedure on the MONOPOLY trademark that the rules for revocation are not there for nothing. Hasbro avoided the duty of use a little less ostentatiously: an earlier depot was not repeated in exactly the same way, but just differently. MONOPOLY was also applied for in respect of other goods and services, in addition to the goods under the old (duty of use) trademark. In fact, this was even done over and over (in total: four filings over time). Hasbro confirmed this as convenient, because this way it does not have to provide proof of use every time in procedures and oppositions.

This is not how the rules are meant, so the Board of Appeal noted. The newly filed trademark is null and void for the goods that already fall under the old (useable) trademark. The trademark is valid for the extension. And so Hasbro will have to show that proof of use for the goods under the older registration if it wants to invoke the trademark.

Maarten Haak

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