EUIPO: Balancing Practicality with Good Faith


Balancing Practicality with Good Faith

The practice of refiling trademarks in unused classes presents a fascinating legal dilemma. While it offers practical advantages, recent interpretations suggested it could be deemed fraudulent if used to circumvent legal requirements. This note delves into this issue through a specific case: Cancellation No C 52 111, where an application to declare a trademark invalid due to alleged bad faith refiling was rejected.

The applicant argued that the owner, Benetton Group S.R.L., refiled the trademark in unused classes to avoid proving use of an earlier mark and evade potential revocation. However, the Cancellation Division of EUIPO - European Union Intellectual Property Office ultimately ruled against the applicant due to:

- No explicit prohibition on refiling: Current legislation does not explicitly prohibit refiling.

- Insufficient evidence of bad faith: The applicant failed to demonstrate that the owner's sole intention was to avoid legal obligations or prevent third-party competition.

- Legitimate reasons for refiling: Refiling can be justified for maintaining opposition rights against similar trademarks and preventing unauthorized use in unused classes.

This case highlights the complexities surrounding trademark refiling. While not inherently illegal, it requires careful consideration to avoid accusations of bad faith and ensure compliance with the spirit and letter of trademark law.

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