Repeated filing MONOPOLY in bad faith

A trademark is under obligation of use five years from filing. Since proof of use can be difficult to collect (see BigMac –Abcors ABC-no. 35), companies re-file their most important trademarks every five years (so-called repeated filing). For a long time is has been questioned whether this was allowed. After all, by a repeated filing the term in which use has to be proved is extended artificially. As the concept of bad faith is not further elaborated in the EU Trademark Directive, a definitive rule should be formed by case law.

Hasbro registered the MONOPOLY trademark three times in the European Union with slightly different goods & services. The existing registrations have been consistently renewed. EUIPO’s board of Appeal has now decided that this is to be considered as bad faith. A repeated filing, claiming protection for some additional items, is not intended to circumvent the obligation of use. Hasbro didn’t give any explanation why it was essential to repeated file the marks and to renew them. For the items are the same or similar, the applied trademark has to be considered as bad faith and the items are therefore removed.

This is painful, as trademark holders can no longer rely on a repeated filing in order to circumvent the obligation of use. Very disappointing for the pharma sector, in which product development (or clinical study) often takes over five years.


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MENTOS has been selling chewing gum under the name MENTOS PURE FRESH for several years. In order to protect her rights MENTOS has registered the following trademarks: the logo MENTOS PURE FRESH, the logo MENTOS PURE FRESH 3 and a figurative depiction of the word PURE. Defendant sells chewing gum under the trademark DENTYNE PURE and has registered its logo as a trademark. Infringement or not?
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