Trademark use requirement and bad faith

Published onSeptember 2019

In France as in many other countries, a trademark can be revoked if it has not been put to genuine use within a continuous five-year period. The rule is given by Article L.714-5 of the French Intellectual Property Code.

It is frequently said that there is an obligation to use a trademark. But it is not to be associated with the practice in some countries, such as the United States of America, where intent to use a trademark and actual use of a trademark must indeed be substantiated before the United States Patent and Trademark Office (USPTO) on a regular basis.

According to French or EU law (See Article 18 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, and Article 58 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark), there is no real obligation to use a trademark but a consequence in case of non-use of a trademark. That is why revocation is a rather common defence when sued for trademark infringement or in opposition proceedings.

With the chance or danger of revocation in mind, some trademark owners are tempted to file or “refile” the same marks over and over. Because with each new trademark registration, a new five-year grace period starts. And this way trademark owners hope they can indefinitely evade the legal obligation of proving genuine use and the corresponding sanctions.

Obviously, such a “refiling” practice is indicative of bad faith since trademark owners do not file new trademarks for the proper reasons. They do not file trademarks in order to use them in the course of trade, but to escape a possible (or likely) revocation action.

This is precisely why the US company HASBRO had one of its EU trademark registration for MONOPOLY cancelled by the Board of Appeal of the European Union Intellectual Property Office. EU trademark No 9071961 was declared invalid for goods and services for which other MONOPOLY trademarks had already been registered but never put to genuine use (EUIPO, Decision of the Second Board of Appeal of 22 July 2019 in case R 1849/2017-2). The conduct of HASBRO was seen as “manifestly intended to circumvent the obligation to prove use of earlier marks and must be considered as an intention to distort and imbalance the European Union trade mark system”.

Even if the intent to use a mark is not actively verified when filing an application for trademark registration within the European Union, filing a trademark application with no intent to use the same must be interpreted as an act of bad faith and must be punished accordingly. In theory at least, because there are in fact many ways for applicants to take advantage of the system.

© INSCRIPTA