The General Court has ruled on the re-registration of the well-known game trademark “Monopoly”. The applicant, a toy manufacturer, had already registered this trademark as an EU trademark in 2010. It is also the proprietor of three earlier “Monopoly” EU trade marks, some of which are also registered for identical goods and services.

Is an identical new trademark application in bad faith?

A board game manufacturer then applied for a declaration of invalidity of the well-known trademark. It argued that the competitor had acted in bad faith when registering the trade mark (see Article 59 of EU Regulation 2017/1001). After all, he had only wanted to achieve an extension of the grace period for use with the new application.

After the Cancellation Division of the EUIPO had initially rejected the application, the Board of Appeal of the Office finally granted the application. The trademark owner appealed against the EUIPO’s decision to the General Court in Luxembourg.

Circumvention of the obligation to use speaks for bad faith

The General Court has now dismissed the action in its judgment of April 21, 2021 (Ref. T-663/19). According to the judges, the competent Board of Appeal of the EUIPO rightly found that the renewed trademark application was in bad faith. Bad faith exists if there are indications that the owner of the respective trademark did not file the application with the intention of acting fairly in competition.

According to the Luxembourg judges, the intention of the trade mark applicant at the time of filing must be the primary factor in making this determination. In the present case, the only recognizable intention was to extend the five-year grace period for use and thus to circumvent the regulation on the compulsory use of a trademark. According to the judges, this intention was incompatible with fair competition. Therefore, they could only conclude that the new trademark application was made in bad faith.

EGC makes important contribution to case law

The EGC thus makes an important contribution to the development of the legally undefined concept of bad faith of a trademark application. In any case, it is now clear that the fact of not having to prove genuine use of a trademark generally indicates the bad faith of a trademark application.

However, this does not mean that identical new trademark applications are always made in bad faith. However, there are only a few conceivable cases in which circumventing the proof of use is not the motive for the identical new application.