Netherlands Update: Monopoly brand of Hasbro applied for in bad faith for circumventing rules on normal use

A recent judgment of the (EU) Court of First Instance confirmed that an application for a trademark maybe in bad faith if the applicant has previously registered the same trade mark for (partly) the same goods or services and thus tries to circumvent the rules on the normal use of trademarks. The judgment thus contains an important warning to holders of large brand portfolios.

What was going on?

Everyone knows the well-known Monopoly brand of Hasbro. It will also come as no surprise to anyone that Hasbro has multiple trademark registrations for the well-known board game, including a 2010 registration for just the word “Monopoly”. That registration was not only on board games but also on other goods and services such as slot machines, vending machines, movies, entertainment, music and sporting and cultural activities. However, Hasbro already had several older registrations for “Monopoly” that overlapped with 2010 registration for some of the goods services.

At one point, the producer of the board game Drinkopoly (“The game that guarantees a (un)forgettable experience!”) also tried to obtain a registration for that name. Hasbro opposed this, also relying on the aforementioned Monopoly brand from 2010. In response, the producer of Drinkopoly, Croatian Kreativni Događaji, brought an action for the annulment of that mark on the grounds that the application for it would have been in bad faith. More specifically, the argument was that Hasbro tried to circumvent the rules on the ‘normal use’ of trademarks by registering its trademarks over and over again. A trademark may be annulled if it is not normally used for the goods and services for which it is registered within five years of registration. But if a trademark owner keeps registering a trademark for (partly) the same goods and services, then a new term of five years will always run. Thus, in principle, a proprietor of the trademark can maintain his registration indefinitely for certain goods or services, even if he does not actually use his trademark for that purpose.

Bad faith

The Court of First Instance confirms that, in those circumstances, there may indeed be bad faith. In doing so, it seems to have attached great importance to the statements made by Hasbro employees during the hearings. Indeed, they admitted that one of the reasons for re-registering trademarks was the desire not to have to provide proof of use in proceedings. In doing so, Hasbro stressed that this was certainly not the only reason for repeated registrations, but that did not matter, according to the Court of First Instance. Even if only one of the reasons is that the aim is to circumvent the rules of normal use, that may be enough to assume bad faith. Thus, Hasbro seems to have dug her own grave to a large extent with these statements.

And now?

The judgment contains a clear confirmation that bad faith cannot only be involved in cases that can be classified as trademark squatting. I think that’s a logical conclusion. There are many trademarks in the trademark registers that are not normally used and it is not desirable if trademark holders can maintain such trademarks unhindered by registering them again and again. This does not benefit free competition, as the Court of First Instance also points out.

By Charlie Engels, Hocker, Netherlands, a Transatlantic Law International Affiliated Firm. 

For further information or for any assistance please contact netherlands@transatlanticlaw.com

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