Judgment of the General Court Sixth Chamber, Extended Composition of 21 April 2021, Hasbro v EUIPO - Kreativni Dogadaji MONOPOLY, T-663/19

• Date: 21 April 2021
• Year: 2021

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XII. INTELLECTUAL PROPERTY

1. TRADE MARK

Judgment of the General Court (Sixth Chamber, Extended Composition) of 21 April

2021, Hasbro v EUIPO - Kreativni Dogadaji (MONOPOLY), T-663/19

Link to the complete text of the judgment

EU trade mark – Invalidity proceedings – EU word mark MONOPOLY – Absolute ground for refusal – Bad

faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001)

Hasbro, Inc. is the proprietor of three earlier EU word marks MONOPOLY. Following an application

filed on 30 April 2010 with the European Union Intellectual Property Office (EUIPO), Hasbro obtained

the registration of another word mark MONOPOLY, which was contested in the present case.

Kreativni Događaji d.o.o. filed an application for a declaration that that mark was invalid pursuant to

Article 52(1)(b) of Regulation No 207/2009,

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under which a trade mark is to be declared invalid where

the applicant was acting in bad faith when he or she filed the application for the trade mark.

By decision of 22 July 2019, EUIPO declared the contested mark invalid for some of the goods and

services and dismissed the appeal as to the remainder. EUIPO found that, with regard to the goods

and services covered by the contested mark which were identical to the goods and services covered

by the earlier marks, Hasbro had acted in bad faith when it filed the application for registration of that

mark.

Hasbro brought an action before the General Court seeking the annulment of EUIPO’s decision, to the

extent that that decision declared the contested mark invalid.

In its judgment, the General Court dismissed Hasbro’s action and explained the rules relating to the

assessment of whether there is bad faith on the part of the trade mark applicant. In particular, it

stated that any re-filing of a trade mark cannot, in itself, establish that there was bad faith on the part

of the trade mark applicant. However, in the present case, the fact that the aim of Hasbro’s repeat

filing was that of not having to prove use of the earlier marks, was capable of establishing bad faith on

its part.

Findings of the Court

As regards the principal line of argument, alleging infringement of Article 52(1)(b) of Regulation

No 207/2009, the Court pointed out at the outset that the absolute ground for invalidity referred to in

that article applies where the proprietor of an EU trade mark has filed the application for registration

not with the aim of engaging fairly in competition but with the intention of undermining, in a manner

inconsistent with honest practices, the interests of third parties, or with the intention of obtaining,

without even targeting a specific third party, an exclusi ve right for purposes other than those falling

within the functions of a trade mark.

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The General Court also referred to the clarification of the

Court of Justice regarding the criteria for the assessment of whether there is bad faith,

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by stating

that the factors listed in the case-law are only examples and that the fact that any one of those factors

is not present does not necessarily preclude a finding of bad faith.

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Council Regulation (EC) No 207/2009 of 26 February 2009 on the Europe an Union trade mark (OJ 2009 L 78, p. 1), as amended.

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Judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO (C-104/18 P, EU:C:2019:724, paragraph 46).

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Judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C-5 29/07, EU:C:2009:361, paragraph 53).