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EUTMs: “Strategic” re-filings and the GC’s last word – for now – on related bad faith & proof of use

General Court (GC) judgment in case T-736/15, 19 October

Re-filings – legitimate interest versus bad faith

Trademark re-filings can have a legitimate interest which could be to slightly amend the specification of goods and/or services of its previous rights or to modernise its trademarks (e.g. slightly changing the stylisation of its figurative trademark) – see GC judgment of 13 December 2012, T-136/11, “the Pelican case”.

However, other re-filings are copies of earlier rights, filed with the aim of using them as the basis of opposition, instead of older rights, to artificially extend the use requirement period. An additional aim in these cases is to avoid proving use of older trademarks and avoid non-use cancellations. The latter aim is expressly listed in the EUIPO’s Guidelines as an example of bad faith filings. That said, “strategic” re-filings are not expressly prohibited by law so bad faith filings continue to be an issue.

European Courts on “strategic” re-filings

European Courts are increasingly wary of trademark re-filings and require rights holders to provide proof of use, even if those rights are not subject to the use requirement.

One of the most relevant cases in this regard is the EUIPO’s decision of the Fourth Board of Appeal of 15 November 2011, R1785/2008-4, “the Pathfinder case”. Here the opponent was requested to prove use of its mark (serving as the basis of opposition) despite not being subject to the use requirement, as it was an identical re-filing of abandoned earlier rights (i.e. same representation, same goods and/or services and same territory).

The EUIPO’s Second Board of Appeal had a broader approach in early 2014, in case R 1260/2013-2, “the Canal+ decision”, as it reached the same finding even if only some of the services in class 38, of most of the re-filings, were identical to those protected by the earlier rights. It also held that an EUTM can also be considered a re-filing of an earlier EU national trademark as well as an EUTM (and vice versa) given the overlap in the territory.

The latest word of the GC in this regard can be found in its recent judgment.

Background: Case T-736/15, Aldi GmbH & Co. KG v. Sky plc [SKY / SKYLITE (fig.)], 19 October 2017.

Sky plc opposed Aldi’s SKYLITE (fig.) trademark  based on its earlier “SKYLIGHT” trademark and its trademarks for “SKY”. The contested goods in classes 9 and 18 were considered identical or highly similar to the earlier trademark’s goods and the signs similar, finding therefore a likelihood of confusion.

In its appeal, Aldi stated that, even though Sky´s trademarks had not been registered for at least five years at the date of the publication of the application for the trademark sought, EUIPO was required, to apply the provisions on proof of use in line with the Pathfinder case, and ask the opponent to submit proof of use of its “SKY” trademarks. Aldi thereby claimed that Sky had artificially prolonged the grace period through continuous re-filing of several “SKY” trademarks.

General Court’s findings

  • Proof of use requested not admissible / Pathfinder not applicable

The GC held that Aldi´s proof of use request was not admissible as, at the date of publication of the trademark applied for, the earlier trademark had been registered for less than five years – the period of time required by the Article 47(2) of the new EUTMR.

The General Court also agreed with the BoA that the Pathfinder conditions were not comparable to the Aldi case as the trademarks at issue were not identical re-filings, the opponent had not abandoned any of its trademarks (as occurred in Pathfinder), and the opponent used its trademarks as per the evidence filed. Furthermore, in the Aldi case, the BoA recognised that the opponent demonstrated a legitimate interest in such re-filings, unlike the obvious bad faith in Pathfinder, where the opponent even offered to sell the earlier trademark to the applicant and admitted that it had re-filed to avoid being attacked in non-use cancellations.

  • Bad faith re-filings only in invalidity actions

Based on previous Article 52(1)(b), now Article 59(1)(b) EUTM, the GC held that finding bad faith in EUTM filings is an absolute ground for invalidity, and that in the context of an opposition procedure (where there is a presumption of validity of trademarks), EUIPO cannot examine whether a trademark fulfils the criteria that supports an absolute ground for refusal, such as those laid down in Article 7(1)EUTMR and referred to in the new Article 59(1)(a) EUTMR. In view of this, the GC considered that it was not obliged to examine the intention of the intervener at the moment of filing.

Comment

It is clear from this case that the latest word of the GC regarding bad faith re-filings shows that it is more reluctant to ask owners of trademarks not subject to the use requirement to prove use of them during opposition proceedings. According to EUIPO’s guidelines, bad faith is not relevant in examination or opposition proceedings (judgment of 17/12/2010, T-192/09, Seve Trophy, §77).

However, given the relevant case-law, opponents basing their oppositions on identical re-filings of earlier rights can be required to prove use of them, even if such younger trademarks are not subject to the use requirement. That said, in light of the recent GC ruling in Aldi v. EUIPO, this is unlikely to be successful if the earlier mark is in fact used or reputed and the opposing mark (not subject to use) was only chosen for convenience. Consequently, defendants should be aware of whether the opponent – basing its opposition on trademarks which are not subject to the use requirement – owns any other prior rights corresponding to the claimed earlier marks; and if so, request the opponent to submit evidence of use for the re-filings, unless the mark is in fact in use or even reputed.