Repeated filing of trademarks in bad faith?

When is a trademark owner in bad faith when filing his trademark repeatedly? The General Court ruled on this issue in the case of Hasbro v. EUIPO.

Hasbro had the trademark Monopoly registered several times. In 2019, EUIPO declared the mark partially invalid (for part of the goods and services), alleging that Hasbro had acted in bad faith when applying to register the mark. Hasbro appealed this decision, but the Board of Appeal and recently the General Court rejected it.

The Tribunal's decision can be interpreted in several ways. The interpretation is relevant in view of future questions on repeated filing of trademarks.

On a broad reading, it may be concluded that repeated filing is not in itself an indication of bad faith: it should be considered a legitimate business practice. However, this broad reading may switch too quickly from "not prohibited" to "legitimate." Indeed, the General Court emphasizes that repeated filing is prohibited if it is intended to circumvent the rule on proof of use. An employee of Monopoly had stated - very frankly - that this saves a lot of trouble in oppositions, where proof of use is asked for every time it is old trademarks. All those trouble can be saved if a trademark is re-registered every four years. However, that intention is in bad faith, the General Court confirms.

The presumption of good faith remains the main rule. When the presumption of good faith can be rebutted based on objective circumstances of the matter at stake, it is up to the trademark owner to provide a plausible explanation regarding the objectives and commercial logic of the application. Formally, therefore, it remains up to the party invoking invalidity to demonstrate bad faith on the part of the trademark owner.

Rosan Slits, student intern