![]() ![]() In its judgment the Court initially stressed that the burden of proof to demonstrate bad faith rests on the invalidity applicant and that “the good faith of the trade mark applicant is presumed until proven otherwise”. Implications and key take-aways Shift in burden of proving bad faith: The Court also confirmed the BOA’s view that it doesn’t matter how many different ‘good reasons’ Hasbro gave during the proceedings to justify its re-filing, as all other reasons were tainted by the intention to get around the proof of use rules. This admission appears to have been central to the Court’s findings of bad faith. A key factor in the Court’s estimation here seems to have been oral evidence provided to the BOA by Hasbro’s in-house counsel, who had explained that one of the motivations for the re-filings was “to reduce the cost of providing evidence and attending hearings”. ![]() In reaching its decision the Court stressed that the mere existence of a re-filed mark alone will not amount to bad faith – as repeat filings are not prohibited after all – but that a re-filing done with the intention of circumventing the consequences of non-use would surpass the threshold of bad faith. On appeal, the General Court upheld the BOA’s decision to partially invalidate Hasbro’s 2010 registration, finding that Hasbro had indeed acted in bad faith in re-filing its earlier applications. In the context of trade mark invalidity proceedings for bad faith, this means an invalidity applicant would have to demonstrate that, at the at the time of filing, the applicant had a dishonest intention to abuse the trade mark system, for example to block competitors from entering the market. ![]() obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.”.undermining, in a manner inconsistent with honest practices, the interests of third parties or.Recent judgements in Koton (C-104/18P) and SkyKick (C-371/18) have provided an updated standard, requiring “objective, relevant and consistent indicia demonstrating that at the time of filing the application, the trade mark applicant had the intention of either: Bad faith is described in Lindt (C-529/07), Ann Taylor (T-3/18) and LUCEO (T-82/14) as “conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices”. The concept of bad faith, referred to in Article 59(1) of the EU Trade Mark Regulation, leans heavily on case law for its interpretation. Consequently, the BOA partially invalidated Hasbro’s 2010 registration in respect of those identical goods and services. Kreativni subsequently appealed the decision to the BOA who, following a rare oral hearing, held that Hasbro had acted in bad faith when filing the 2010 registration for goods and services identical to those covered by its earlier registrations. The EUIPO's Cancellation Division initially rejected the cancellation request altogether. Kreativni argued that in filing an application for identical goods and services as covered in one if its earlier registrations, Hasbro was seeking to circumvent the obligation to show genuine use of its mark and improperly extend the 5 year grace period. (‘Kreativni’), a Croatian board game company and makers of the board game "DRINKOPOLY", applied to cancel one of Hasbro's later filings – a 2010 registration of MONOPOLY - on the basis that the mark was invalid due to Hasbro acting in bad faith when it filed the application. Hasbro is the owner of several EU trade mark registrations of the word MONOPOLY, the earliest of which dates back to 1998. v EUIPO (T-663/19), that Hasbro acted in bad faith in its re-filing (or so called “evergreening”) of trade mark applications for the mark MONOPOLY, on the basis that one of the motivations for Hasbro’s re-filing was to avoid having to file evidence of use in the context of opposition proceedings. The General Court has upheld the decision of the EUIPO Board of Appeal (‘BOA’) in the case of Hasbro, Inc.
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