“MONOPOLY”商标纠纷强调了真实使用的重要性

发布时间：2019-11-22 14:10:33 浏览： 215

商标纠纷

　　原文：

　　The Board of Appeal’s decision in MONOPOLY together with the decision in the SKYKICK case (in the pipeline at the time at writing) have the potential to change trade mark practice in Europe regarding bad faith applications. A five year grace period from registration is usually given to trade mark owners, during which time they can enforce their mark against third parties, without having to prove that they have used their mark in trade. Some brand owners will reregister their trade marks during the grace period, in order to re-set the clock. But is this common practice fair play?

　　In case R 1849/2017-2, a Croatian company called Kreativini Dogadaji applied to revoke Hasbro’s famous MONOPOLY trade mark. Kreativini argued that Hasbro had filed the challenged EUTM repeatedly and therefore that it had a dishonest intention at the time of filing. According to Kreativini, registering a trademark and then periodically re-registering an identical trademark could serve to improperly and fraudulently extend the five year grace period indefinitely to evade the legal obligation of proving genuine use and the corresponding sanctions.

　　Therefore, Kreativini claimed, Hasbro’s filing was made in bad faith and couldn’t be invoked to evade the corresponding sanctions. Kreativini also contended that the contested EUTM had been filed with the sole intention of artificially extending the 5 year grace period of its previously registered MONOPOLY EUTMs which were protected for identical goods and in the same territory and to circumvent the use requirement of the marks in opposition proceedings.

　　At first instance, the EUIPO’s Cancellation Division rejected Kreativini’s application for a declaration of invalidity. However, that decision was overturned by the Second Board of Appeal, who found that Hasbro had acted in bad faith when it filed the application, given that it covered identical and similar goods and services to their earlier registration for the same mark. Contrary to the reasoning provided by the Cancellation Division, the assertions made by Kreativini that the EUTM under attack was made in order to extend a non-use period were even confirmed by Hasbro themselves and hence were far from being mere speculation.

　　This decision should be viewed as a warning that brand owners may need to reconsider protection and enforcement strategies.

　　If you would like further advice, please get in touch with our Trade Marks team. This is a continuation of the case note on previous rulings on this case.

　　译文大意

　　克罗地亚的一家公司Kreativini申请撤销美国公司孩之宝（Hasbro）的著名商标“MONOPOLY”。Kreativini称，孩之宝反复提交“MONOPOLY”欧盟商标申请的动机不纯。Kreativini表示，孩之宝先注册了“MONOPOLY”商标，然后定期重复申请注册同一商标，目的是欺诈性地延长5年的宽限期，以规避法律规定的证明真实使用的义务。

　　Kreativini指出，孩之宝的上述行为出于恶意，是为了延长其之前注册的“MONOPOLY”欧盟商标的5年宽限期，以规避异议程序中的商标使用要求。

　　欧盟知识产权局（EUIPO）的撤销部门驳回了Kreativini提出的无效宣告请求。但是，该裁决被EUIPO第二上诉委员会推翻，委员会指出，鉴于孩之宝申请的商标与之前注册的商标相同且涵盖相同和相似的商品和服务，故孩之宝的行为出于恶意。

　　上述裁决再次提醒品牌所有人注意保护与实施策略。

还不清楚，咨询商标顾问清楚了，我要办理业务