Trademark refiling: a legitimate strategy or registration in bad faith?

Spain European Union

Discussion on the treatment of the strategy of repeated registration of trademarks, known as refiling

Trademark refiling: a legitimate strategy or registration in bad faith?
October 25, 2021

A debate has sparked in recent months on how to deal with the strategy of refiling trademarks.

Following the General Court of the EU’s judgment in the Monopoly case, the trademark community has been debating the treatment of trademark refiling. This debate has added fuel to the existing discussion on registering trademarks in bad faith.

The ultimate goal is to determine whether, and in what cases, it is legitimate for the holder of a registered trademark to apply to register a new identical or almost identical trademark for the same products or services while the other is still in force.

This is known as refiling, and it begs the question of what might lead a trademark holder to apply for this new registration. Why re-register what is already registered? Ultimately, the legitimacy of the conduct lies in those reasons.

There are undoubtedly cases in which refiling is perfectly legitimate, e.g., if the aim is to update the previous trademark registration so that the new one more accurately reflects the current use of the trademark.

The debate becomes more interesting when the new registration appears to be linked to the non-use of the trademark. This is when the holder does not use the registered trademark but registers a new, identical one before the non-use period envisaged in the law as grounds for expiry elapses (in this case, five years).

The Monopoly case is a good example. On April 30, 2010, the toy manufacturer Hasbro applied to register the well-known MONOPOLY sign in classes 9, 16, 28 and 41, and the application was granted on March 25, 2011. In 2015, Kreativni Dogadaji d.o.o. filed an application to have Hasbro’s trademark declared invalid, claiming that it was merely a refiling of earlier trademarks to avoid having to provide proof of the use of those earlier trademarks (e.g., proof of use would be required if Hasbro opposed third-party trademark applications).

Contrary to the Cancellation Division’s decision, the EUIPO’s Board of Appeals ruled that, for the products and services protected by the new trademark that were identical to those covered by the earlier trademarks, the application had been filed in bad faith, and so it partially canceled it. That decision was appealed and the General Court dismissed the appeal in a judgment dated April 21, 2021.

The judgment confirms that bad faith must be assessed based on the circumstances of each case, and that bad faith cannot be presumed merely because a trademark has been refiled. However, in this specific case, it ruled that there was bad faith because Hasbro’s intention in applying for the new trademark was to sidestep the fundamental principle of EU trademark law regarding the requirement to provide proof that the trademark is being used in some cases. More particularly, in this case, the decision is largely explained by the fact that, during the proceedings, Hasbro had stated that the reason for refiling was to avoid having to provide evidence that its trademarks were being used in opposition proceedings, (in those proceedings, the new trademark would be sufficient grounds to oppose a third party’s trademark application, since there is no requirement to prove use of trademarks under five years old).

As stated, establishing whether trademarks are applied for or registered in bad faith, including cases of refiling, naturally depends on the circumstances of the specific case. The judgments (including the well-known Lindt judgment) issued in relation to this ground for invalidity have provided some criteria, but these criteria cannot be considered exhaustive. This issue remains open, and new cases are sure to arise.

October 25, 2021