Trademark squatting (in short: registering other people’s marks before they do, usually in order to obtain financial gain) is a problem that has been existing for many years. And although courts outside the Netherlands have dealt with this subject already (also outlined in the article I wrote earlier this year), there was no judgment from a Dutch court dealing with the question whether such filings can be nullified on the basis of bad faith. Until two weeks ago. Then the court in The Hague handed down a judgment between Samsung Electronics Co and EBB Development Ltd., the latter being one of the many companies owned by Mr. Michael Gleissner.
Samsung filed for the mark BIXBY in the EU. This application was opposed by EBB on the basis of their prior Benelux mark BIBBY. Samsung decided not to await the outcome of the EU opposition proceedings, but to attack the basis of the opposition. And was successful. The Court ruled that the Benelux application for BIBBY was filed in bad faith as it appeared to be filed with the sole purpose of creating a ground for opposing Samsung’s mark. Main argument was formed by the fact that on one and the same day 1) EBB filed for the Benelux mark; 2) invoked priority of a Pakistan application; and 3) filed an opposition against the EU application of Samsung. The court noted that the Pakistan register is not publicly available and applications are only published after at least a year. For that reason EBB’s applications in Pakistan could stay under the radar.
In addition to these circumstances, the Court followed Samsung’s remarks regarding the filing behavior of EBB Development Ltd. and Gleissner’s other entities. These included the thousands of trademark and domain name filings without any use, the hundreds of pending procedures worldwide, combined with the fact that EBB could not give a solid explanation of its goal and commercial reasoning of this filing policy. In court EBB argued that it invests in apps and because new technologies and apps need new names, EBB is building a large trademark portfolio. The court concludes that these circumstances are contrary to the essential function of a trademark and nullifies the Benelux trademark application for BIBBY. In addition it concludes that the second defendant, Mr. X (who can’t be anyone else but Mr. Gleissner) is also liable because he was aware of the bad faith filing and has not taken any action to avoid this. To the contrary, X seems to have encouraged these actions.
This judgement not only outlines the methods that trademark squatters use to block other parties’ rights, but also points out that this Benelux court sees no room for such new business models alike the one of Gleissner. Next to going to a court for such proceedings kindly note that nowadays, such proceedings are also available at the Benelux Office, which typically leads to faster and more cost-effective proceedings.
Kindly contact us for any questions you may have.