Background of the case

On 30 April 2010, the appellant, Hasbro, Inc. filed an EUTM application of the word mark MONOPOLY, in classes 9, 16, 28 and 41, being granted in 2011 (EUTM 9071961).

In 2014, the toy company Kreativni Događaji, filed an invalidity action, claiming that Hasbro, at the time of filing the EUTM, was already the owner of three other EU word marks MONOPOLY for the same goods and services as the prior marks. It was claimed that the US toy manufacturer intended, with this latest application, to avoid the proof of use required for its earlier registered trademarks.

At first instance, by decision of 22 June 2017, the EUIPO dismissed the application for a declaration of invalidity, as it considered the applicant failed to provide sufficient evidence to support its claim.

An appeal was then filed challenging the decision of the Cancellation Division on 22 August 2017.

The Board of Appeal, by decision of 22 July 2019, partially annulled the earlier decision and declared the contested mark invalid in relation to the goods and services already covered by the applicant’s earlier registrations. In this decision, the Office stated that the new MONOPOLY EUTM had as main intention to abuse and fraudulently extend de five-year grace period of the earlier mars, and thus to avoid the proof of use.

In assessing this bad faith, the Board took into consideration the fact that the MONOPOLY marks were subject to the obligation to prove use in two earlier opposition proceedings. In addition, the goods and services included in the new mark were already protected in the earlier MONOPOLY marks. It was finally proven that this was a common business practice in order to avoid having to face proof of use in each of the opposition proceedings, thus demonstrating a clear intention on the part of the appellant.

The toy manufacturer Hasbro subsequently appealed the decision, claiming that the Board did not carry out an overall assessment, but only took into consideration the administrative advantage of refiling the word mark MONOPOLY.

The General Court’s decision

The General Court concludes that, although there is no provision prohibiting the repeated application for registration of a trade mark, such an application may be contrary to the rules if it is made in order to avoid the consequences of non-use as a mean of extending the period of grace, which can be assimilated to the concept of abuse of rights. The purpose was therefore to avoid the proof of use and the costs and effort involved in providing thereof.

Consequently, the General Court dismissed the appeal, as the MONOPLOY application was filed on bad faith in order to avoid the obligation to provide proof of use.

Judgment of the General Court of 21 April 2021, Case T-663/19