MONOPOLY – Trade Mark Appeal Edition Hasbro, Inc. (Hasbro) had one of its European Union trade mark registrations for MONOPOLY struck out in part by the Board of Appeal on the basis that it was filed in bad faith. It appealed the decision before the General Court. Background and first appeal decision The Board of Appeal decision was originally reported in this publication in December 2019. An EU trade mark enjoys a finite grace period of five years’ non-use from the date on which it achieved registration. After that period, if and insofar as it remains unused in EU commerce and there are no proper reasons for non-use, there are consequences. One of these is that it becomes vulnerable to a revocation action for non-use and could be struck from the register where the unused goods and services are concerned. Another is that it cannot effectively form a basis of opposition before the European Union Intellectual Property Office (EUIPO) as the owner can be required to prove its use over the previous five years.
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Proving use of a registered mark which is over five years old obviously requires an investment of time and cost by the registered owner. In order to avoid this, some trade mark owners reapply for the same mark periodically, thus restarting the nonuse grace period for each application. The resulting registration can be used in opposition proceedings for another five-year period without proof of use. This practice of repeated filings for the same mark is called “evergreening”.
Croatian company was successful in a partial invalidity claim against the 2011 registration before the Board of Appeal on the ground that it was filed in bad faith. The registration was cancelled insofar as it covered duplicate goods previously registered under MONOPOLY. The Board of Appeal agreed that Hasbro had a dishonest intention when the 2011 application was filed, because it was a repeat filing made with the intention of resetting the non-use clock.
Hasbro had three EU trade registrations for the word MONOPOLY, filed respectively in 1996, 1998, and 2010. It obtained a fourth registration in 2011 for goods and services, in part identical to the previous registrations and in part for previously unregistered goods and services. A
General Court decision The General Court upheld the Board of Appeal decision here, with some useful clarifications along the way, including the following:
