Repeated trademark filings: EUIPO Board addresses ‘annoying’ practice
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Repeated trademark filings: EUIPO Board addresses ‘annoying’ practice

Sponsored by

maiwald-logo-cropped.PNG
ring-binders-aligned-2654130.jpg

Susanna Heurung of Maiwald welcomes a decision by the Board of Appeal regarding the extension of a grace period for use where the applicant’s bad faith was obvious

The so-called grace period for use in the EU Trademark Regulation is intended to give applicants the opportunity to protect their trademark and thus an important marketing tool before the product is firmly established on the market. It is always annoying when companies take unfair advantage of this provision and reapply for their trademarks shortly before the expiry of the grace period with the recognisable sole aim of circumventing the expiry of the grace period. The EUIPO Board of Appeal (the Board) has put a stop to this in a case where bad faith was quite obvious (Wong Lo Kat, decision of December 20 2022).

The trademark application ‘Wong Lo Kat’ had been filed six days before the expiry of the grace period of an older mark by the same applicant for the same goods under the same sign. This new application was preceded by cancellation proceedings against the earlier, identical trademark of the same applicant, where, in the end, the applicant was able to prove use only for part of the claimed goods.

European Court of Justice decision provides basis for ruling

The Board drew on the principles from the Monopoly decision of the European Court of Justice of April 21 2021 and held that repeat applications are not to be considered in bad faith as a matter of principle. However, the motives for the new applications and the chronology of events have to be taken into account when assessing whether the new application has been filed in bad faith.

It is true that the burden of proof lies with the applicant. However, the applicant is in the best position to explain to the Board the strategy behind the new application and legitimate interests related thereto. However, the applicant in the case in question had not commented on this and the Board could not identify any legitimate motives.

On the contrary, the fact that the applicant had filed a new application for the trademark for all goods, although it had only been able to prove use for some of the goods in the previous cancellation proceedings, is an indication that the proprietor tried to circumvent the consequences of the use requirement by filing a new application. The fact that the new application was filed six days before the expiry of the grace period of the earlier mark also indicates bad faith. The new application was therefore cancelled.

Tackling the unjustified blocking effect of trademarks

The decision is to be welcomed. Together with the possibility of filing applications for broad terms such as software or chemical products with a very broad scope of protection without limitation to a specific industry or field of use, the extension of the grace period for use over repeated trademarks in bad faith leads to an unjustified blocking effect of trademarks, which the use requirement is supposed to avoid.

It is to be hoped that the authorities will not be too restrictive here and classify an application that is obviously filed in bad faith as such even if the list of goods of the old trademark and that of the new trademark do not match 100%. Of course, there are good reasons for refiling a trademark application. However, anyone who pursues honest intentions will not find it difficult to explain these to the EUIPO.

more from across site and ros bottom lb

More from across our site

Based on surveys covering more than 25,000 in-house lawyers, the series provides insights into what law firms must score highly on when pitching to in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tony Nguyen, who returned to Fish & Richardson this month after a year travelling overseas, tells Managing IP how and why he took the plunge
Tom Treutler, who previously managed the Vietnamese office of Tilleke & Gibbins, has joined East IP
Counsel discuss upcoming AI and data privacy legislation and what they’ve learned since Chile joined the Madrid Protocol
INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
As law firms explore how best to support clients at the UPC, members of the UPCLA network believe they have found the best of both worlds
The Industry Patent Quality Charter hosted a conference in which it discussed the importance of granting high-quality patents
Julia Holden explains why, if she weren’t in IP, she would be directing and producing live English-language theatre
Gift this article