29/04/2021
DO NOT PASS GO, DO NOT COLLECT £200
After being registered for 5 years, EU trade mark owners can be requested to prove that they have put their trade mark to genuine use...
If TM use evidence is requested, the burden is on the trade mark owner to prove genuine use of its mark, this is quite a mammoth task for even the owners of the most famous trade marks... It is a costly, time consuming and often annoying feat
So, how do these requests for use come about? One way is if a trade mark which has been registered for longer than 5 years is used as a ground to object to a similar/identical later filed trade mark application, the applicant can request the owner of the earlier mark first prove that it has put its trade mark to genuine use...
In order to avoid having to prove use of its trade mark during opposition proceedings, , the owners of the famous MONOPOLY board game simply filed a fresh application for the MONOPOLY trade mark which would not become vulnerable to non-use unlike its earlier trade mark registrations... Sounds like a water tight trade mark filing strategy however...
The EU General Court has ruled that while there is no prohibition on re-filing trade marks as such, in this case, the aim of re-filing their trade mark was to circumvent having to prove use of its trade mark and this led to a finding that filed its application in bad faith resulting in the cancellation of the latest filed MONOPOLY trade mark registration...
It was key to this decision that a member of staff actually testified to the advantages of using this filing strategy of re-filing trade marks in order to reduce administrative burden in opposition proceedings, not leaving out that it was “industry standard” to file new trade mark applications and rely on those trade mark applications that were not vulnerable for trade mark opposition proceedings... So eloquently proving ’s intention to circumvent the system 🤦🏽♀️