Re-filing Identical Trademark to Avoid Use Obligation Deemed Bad Faith
The European Union Intellectual Property Office (EUIPO) has cancelled the EUTM ‘Wong lo kat’ after determining it was filed in bad faith. The contested trademark, identical in sign and goods to an earlier EUTM held by the same proprietor, was filed just six days before the grace period for the original mark expired.
A revocation application had been filed against the earlier EUTM, and only partial genuine use was proven. The Board of Appeal (BoA) found that the new filing aimed to circumvent the legal obligation to use the original trademark, violating Article 59(1)(b) EUTMR.
Citing the MONOPOLY case (T-663/19), the BoA emphasized that while repeat filings aren’t illegal, doing so to avoid non-use consequences can signal bad faith. In such cases, the burden to prove bad faith lies with the cancellation applicant, but the trademark owner is expected to provide a legitimate commercial rationale.
In this case, no valid justification was presented for the re-filing. The trademark owner remained silent about its intentions, and no commercial reasoning was provided to counter the claim of bad faith.
The BoA concluded that the re-filing was solely intended to extend the monopoly on the trademark without genuine use. Consequently, the contested EUTM was cancelled due to bad faith. More information on the link