Refiling of a trademark doesn’t always protect the holder against sanctions for failure to use the mark | In Principle

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Refiling of a trademark doesn’t always protect the holder against sanctions for failure to use the mark

Recent EU case law shows that the owner of a trademark refiling the same mark in order to evade the requirement to use the mark should expect to be accused of acting in bad faith and required to prove actual use of the mark, even if less than 5 years has passed since registration of the mark.

When a trademark is registered, the holder must use the mark for the goods or services protected by the mark. Actual use of the trademark must begin within 5 years after issuance of the decision granting protection to the trademark. Otherwise, the holder is exposed to the risk of cancellation of the mark.

Moreover, in proceedings before the EU’s trademark authority—the Office for Harmonization in the Internal Market (Trade Marks and Designs), or OHIM as it is known—a party filing opposition to registration of a trademark may be summoned to present evidence of actual use of the mark which is the basis for the opposition, if it has been at least 5 years since the mark was registered. If evidence of use is not presented, the opposition will be rejected.

A commonly used strategy to evade the use requirement is to refile the same trademark and thus obtain a further 5 years to begin actual use of the mark. Because there is no regulation governing the number of trademarks that may be filed by one holder, one may imagine a situation in which the same person avoids having to use the trademark by filing it numerous times.

But the recent case law from the EU shows that trademark holders following this strategy can expect to be charged with acting in bad faith, and in certain circumstances will be required to show actual use of a trademark which has been registered for less than 5 years.

This was what happened in the decision by the OHIM Fourth Board of Appeal of 15 November 2011 in the Pathfinder case (No. R-1785/2008-4). The holder of an earlier Spanish trademark for “Mars Pathfinder” opposed the application for registration of a Community trademark for “Pathfinder.” During the proceeding, the filer of the “Pathfinder” mark requested that the holder of the “Mars Pathfinder” mark present evidence of use of the mark even though it had been registered for less than 5 years, arguing that the registration was obtained by refiling of a mark identical to earlier trademarks, and was the filing was made in bad faith, solely to avoid the sanctions for non-use of the mark.

OHIM upheld this argument, finding that the term “earlier trademark” does not mean a trademark with a specific registration number, but essentially the identical mark for the same goods and the same territory. Under this interpretation, OHIM ordered the holder of the “Mars Pathfinder” mark to submit evidence of use of the mark, finding that it was identical to the holder’s previously registered trademarks. In this case the bad faith of the holder was undisputed, as the holder of the “Mars Pathfinder” mark admitted that it had refiled the mark in order to avoid the obligation to use the mark, and had offered to sell the mark to the filer of the “Pathfinder” mark for a substantial sum. The case ended with denial of the opposition and registration of the “Pathfinder” mark.

But in a similar case before the Court of Justice of the European Union, the General Court held that the holder of the “Pelikan” trademark had not acted in bad faith when it filed for registration of the mark even though it held an earlier Community trademark for the same name with similar graphics, for similar goods and services. In v OHIM (Case T-136/11, judgment of 13 December 2012), the court held that the owner of the “Pelikan” mark was entitled to refile the trademark in connection with updating the graphic design and narrowing the list of goods covered by the mark. In this case, it was relevant that the newly filed mark was not identical to the earlier mark, and the changes to the mark were justified by the holder’s desire to modernise the appearance of the mark in connection with the celebration of the 125th anniversary of the brand.

pelikan ANG

And in a more recent case before the OHIM Second Board of Appeal (No. R-1260/2013-2, 13 February 2014), citing Pathfinder, OHIM required the holder of the trademarks Canal+, Canal Plus and Plus, which had refiled the marks, to present evidence of use of the marks even though the lists of goods and services covered by the earlier and later marks were not identical. In the Canal+ case, OHIM held that the existence of differences in the lists of goods and services did not exclude a finding that the trademarks were identical, because the list could always be limited or the trademark could be divided. Moreover, there were goods and services in the lists which were identical for all of the trademarks.

With respect to one of the verbal and graphic marks of Canal+, which was refiled with different graphics, the board referred the matter back to the Opposition Division of OHIM, which held on 23 July 2014 that the marks were not identical and the owner of the marks was not required to present evidence of use of the mark.

canal ANG

This decision is important, because while in the Pathfinder case the earlier trademark for which the holder was required to prove actual use was found to be identical in graphics, territory, and the list of goods and services, in the more recent Canal+ case the lists of goods and services were not identical, and only certain services were identical. Nonetheless, OHIM decided that when relying on those opposition marks, the holder had to present evidence of use of the earlier marks with respect to the services that were identical.

It may be concluded from these cases that a mere modification of the list of goods and services covered by an existing trademark, for example by expanding the goods and services covered by the mark, without updating the graphics, will not suffice as a strategy for protecting the holder against the obligation to prove actual use of the trademark.

Monika Wieczorkowska, Intellectual Property Practice, Wardyński & Partners