With a judgment of April 21, 2021 (case number T-663/19), the ECJ has made a decisive contribution against the bad habit of the filing of repetition trademarks, with which companies deliberately want to circumvent the requirement of genuine use of trademarks.
Facts
In the underlying case, the Croatian company Kreativni Dogadaji d.o.o. applied in 2015 for cancellation of the EU trademark “MONOPOLY” of the American owner Hasbro Inc. In addition to the application filed in 2010 for classes 9, 16, 28 and 41 and challenged here, Hasbro has several, earlier applications for the same sign in different classes. The application was rejected by EUIPO at first instance on the grounds that it could not be considered bad faith per se if the owner repeatedly applied for the same sign for different goods over a 14-year period.
Judgment
However, the EUIPO Board of Appeal and also the ECJ did not share this assessment and ordered cancellation of the trademark at least for the goods that had already been the subject of the earlier applications for the MONOPOLY trademark. Hasbro had to admit in the proceedings that it wanted to circumvent the requirements of the genuine use for certain goods with the repeat trademarks. The fact that Hasbro had also cited other motives for the repeat marks was therefore not sufficient to exclude bad faith.
Conclusion
The judgment is to be welcomed without reservation. The filing of repeat trademarks is a recurrent and annoying bad habit. Of course, this judgment does not mean that the application for an identical sign for similar goods would be strictly excluded in the future. It will always depend on the exact circumstances of the individual case. In principle, however, the court has taken the right path here to ensure fair competition for all.
