FAQ

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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IP Quiz

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?

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