Virtual Round Table - Intellectual Property 2022
21st November 2022
Abuse of law and/or process is not a claim traditionally encountered in trademark proceedings. However, the Board of Appeal of the EUIPO was recently petitioned by Formula 1 Licensing BV (‘Formula One’) - the proprietor of the famous F1 and related trademarks - to consider this claim in its dispute with a German national, Dieter Hang (Case R 904/2021-1).
The parties have been in acrimonious dispute dating back to 1998, when Formula One first objected to Hang’s use and registration of variations of the ‘Formula 1’ brand in Germany. Hang has even filed criminal charges against Formula One, which were dismissed by the German public prosecutor’s office. In 2015, after losing in cancellation proceedings initiated by Formula One, Hang filed 10 applications for revocation of EU trademarks (EUTMs) owned by Formula One. In 2018 he attacked another 60 EUTMs owned by Formula One with two further EUTMs being attacked in 2019. In total, Formula One have been party to 68 non-use revocation actions between the period between 2015 and 2019, all filed by Hang.
The present case concerned the non-use revocation action brought by Hang against the figurative EUTM FORMULA 1 owned by Formula One and covering Classes 14, 16, 25, 28, 30, 41 and 42. In response, Formula One submitted evidence to prove genuine use of the challenged mark. In March 2018 the Cancellation Division of the EUIPO partly revoked the EUTM, ordering that it only remained on the EUTM Register for “commemorative coins” in Class 14. Formula One appealed the decision, asserting that Hang’s revocation application was filed in abuse of law and process.
Abuse of process: the SANDRA PABST case
The position on abuse of trademark process was recently determined in the SANDRA PABST case. The 2020 decision issued by the Grand Board (comprising senior members of the EUIPO Board of Appeal) took a strong stance against abusive practices of Michael Gleissner (reputedly a ‘trademark troll’) and his companies. The case concerned a revocation action that Fashion TV Brand Holdings (Fashion TV), a Gleissner-related company, brought against the SANDRA PABST EU mark, owned by CBM Creative Brands Marken. Fashion TV claimed that the SANDRA PABST mark had not been put to genuine use. In its decision, the Grand Board ruled that the revocation action was filed with a fraudulent end aimed at obtaining undue advantage, and constituted an abuse of rights and process.
Whilst the Grand Board qualified the notion of abuse of process as a “general procedural objection of a preliminary nature”, which prevented discussion of the merits of the case (ie, assessment of genuine use of the mark), it gave consideration to the following in its assessment of the case:
1) the simultaneous and massive attack on CBM’s trademarks, consisting of 37 different revocation requests filed by Fashion TV and associated companies;
2) the attempt to acquire two of the 37 trademarks (exerting disproportionate pressure on the EUTM proprietor which was done in a retaliatory manner);
3) the nature of the company that filed the revocation request (established only days before the revocation request was filed and whose only business activity was acting as a revocation applicant);
4) the large number (hundreds) of revocation actions filed before the EUIPO and the national offices; and
5) the large number (thousands) of trademark applications, company name registrations and domain names filed by Gleissner- related companies around the world with no apparent legitimate business interests behind them.
Board of Appeal’s reasoning
In this case, the board dismissed Formula One’s appeal, asserting that “filing a high number of revocation actions against marks belonging to the same proprietor does not necessarily lead to an abuse of law”. Applying each of the SANDRA PABST conditions, the board found as follows:
1) Despite Hang having filed 68 applications for revocation, this alone could not prove abuse of law. Unlike SANDRA PABST, there was a “common pattern” in the trademarks attacked by Hang (‘F1’ or ‘Formula 1’).
2) The vast majority of EUTMs under attack were surrendered by Formula One. In addition, Hang’s revocation request was rejected only for “commemorative coins” in Class 14, thereby pointing towards a genuine attack against the non-use by Formula One of its mark.
3) Hang initiated the present proceedings (and the other 67 related matters) without trying to hide his role behind the revocation applications, unlike Gleissner in SANDRA PABST.
4) Hang did not file any other revocation request before any national IP office and did not attack any other party than Formula One and its affiliates.
5) Hang owned only three withdrawn EUTM applications and six cancelled German registrations. These, however, were low numbers compared to the SANDRA PABST case, where it was established that more than 1,100 company names, 2,500 trademark applications and 5,300 domain names were linked to the revocation applicant.
Based on the above, the board concluded that Hang’s present revocation request, as well as his other 67 related actions, were not filed as an abuse of law, but were a legitimate means of defence and in the public interest.
This case is significant as it provides further guidance on the rules surrounding trademark system abuse, which appears to be on the rise - particularly with the emergence of trademark trolls. It reinforces the importance of the SANDRA PABST conditions in determining an abuse of law and/or process claim in trademark disputes. It will be interesting to see if Formula One appeal this decision to the General Court.
This article first appeared in WTR Daily, part of World Trademark Review, in April 2022. For further information, please go to www.worldtrademarkreview.com.
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