The tale of the COMMODORE trademark’s win
The tale of the COMMODORE trademark’s win, the EUIPO’s defeat and Michael Gleissner’s Trademarkers NV well-deserved slap in the face
In a judgement of 13 December 2018, the General Court (T-672/16 of 13) overturned the EUIPO Board of Appeal’s decision of 13 July 2016, ruling that C=Holding BV, owner of the COMMODORE trademark in inter alia the EU, failed to establish genuine use in relation to some goods and services and that the reasons put forward for non-use could not be regarded as proper reasons within the meaning of Art. 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).
Some background: On 26 April 2006, Commodore International BV, the predecessor to C=Holdings BV, obtained an International Registration for COMMODORE (No 907082) designating inter alia the EU for goods and services in classes 9, 25, 38, and 41 of the Nice Classification. Protection in the EU was granted on 21 December 2006. On 26 September 2014 Trademarkers NV, a company of the infamous Mr. Michael Gleissner (previously referred to as an “Infamous troll” in connection with his UK trademark cases), filed an application for invalidation on the basis of Art. 51(1)(a) of Regulation No 207/2009, for lack of genuine use for a continuous period of five years.
By decision of 3 November 2015, the Cancellation Division upheld the application for revocation in respect of all the goods and services covered. The Fourth Board of Appeal later partially annulled the first instance decision holding that genuine use was established for programs for electronic games for use in combination with computers, televisions and monitors, and game console software in Class 9 but not for the remaining goods and services covered, and that no proper reasons for non-use were provided in relation to the these goods and services.
According to the case-law only obstacles which have a sufficiently direct relationship with a trademark, making use impossible or unreasonable, and arising independently of the trademark owner’s may be considered proper reasons for non-use. A case-by-case assessment is necessary.
In the present case, the Board of Appeal found that the evidence which the applicant had submitted was insufficient to prove proper reasons for non-use.
However, the General Court now rules that Board of Appeal erred in its ruling, as the specific circumstances of this case constitute in fact proper reasons justifying the non-use of the trademark COMMODORE. These circumstances included, a dispute relating to the ownership of the trademark concerned and particularly a series of maneuvers used by the adverse party in that dispute (Asiarim). These actions were both false and constituted acts of bad faith. Further the extent and particularities of these maneuvers made it practically impossible to genuinely use said trademark. Indeed Asiarim’s actions included making false statements about the ownership of the trademark concerned in order to be declared the owner, as well as actively contacting actual and potential clients of C=Holdings BV predecessor in order to block the latter from doing business in relation to the trademark.
It is clear the General Court correctly found the Board of Appeal’s assessment of the factual circumstances of the case was cursory. A trademark owner faced with such unhappy circumstances as those which were applicable to this case, may expect a sufficient level of seriousness from the EUIPO when assessing relevant circumstances to determine whether Art. 51(1)(a) Regulation No 207/2009 applies.
That said, this decision is very joyous news to C=Holding BV, who hopefully (given that the current decision can still be appealed) as from the 2019 can without any further hurdles continue marketing its COMMODORE trademark.
In a final note, we draw your attention to the very convenient side effect of this judgement, i.e. it entails a new set-back for Michael Gleissner who was, via his company Trademarkers NV, the instigator of this cancellation action against C=Holding.
Let’s wait and see what 2019 brings for the COMMODORE trademark and Mr. Gleissner…
Katia De Clercq and Jennifer Kepler
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