The board game giant Hasbro has rolled the wrong dice with the EU Intellectual Property Office and have had their EU trade mark partially invalidated on the grounds on bad faith.
The EU General Court determined that Hasbro were following a filing strategy in which they were trying to avoid having to prove genuine use.
The mark in question was for ‘Monopoly’ and was filed in 2011. Croatian board game seller Kreativni Dogadaji filed a claim for invalidation against Hasbro in respect of specific goods and services under classes 9, 16, 28 and 41. The claim states that the goods and services of the 2011 mark were identical to earlier trade marks filed by Hasbro and therefore the reason for the new registration was to avoid having to provide evidence of genuine use following a 5 year registration period.
This claim was successful on first consideration in 2019 by the EU Intellectual Property Office.
On appeal, Hasbro claimed that the Monopoly mark was so famous that it would be out of the question to suggest it had not been used genuinely in respect of games. Hasbro continued to claim that that requiring it to prove use of the mark within the proceedings for invalidity would result in its incurring significant costs and would cause an influx of new claims against refiled applications.
The EU General Court rejected the claims and did highlight that Hasbro themselves did admit during proceedings that there is the benefit of not having to provide proof of use and it is something that is widely done through the industry. Without providing evidence of such commonplace practise, Hasbro’s appeal was rejected and the mark invalidated for such goods.
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