Evergreening | Trade Mark Protection
Evergreening describes the periodic re-filing by a company of trade marks that are identical to previous registered marks prior to the expiration of the five year grace-period allowed following original registration and before actual use.
If the mark is not re-registered it is at risk of a cancellation action for non-use. Opposing such a non-use application would involve its owner proving that the mark was used for the purpose for which it was granted, which may prove costly.
Additionally, by maintaining a trade mark which is less than five years old, the owner is never required to provide evidence of use of an older mark, in the event of being faced with ‘opposition proceedings’ to prove genuine use of earlier marks.
However, this practice may amount to findings of ‘bad faith’ as the requirement to use a mark after the grace period of five years is intended to prevent anyone obtaining an unfair monopoly for an unlimited period. The Trade Marks Register is intended to record marks that are actively used in the market to distinguish their goods and services.
Stuart Southall of KANGS comments upon recent cases concerning ‘evergreening’.
Recent Court Activity
The extent to which ‘evergreening’ and ‘bad faith’ are being tested in the courts is highlighted by two recent high-profile decisions.
Hasbro v EUIPO 2021
- In 2011, Hasbro registered a Trade Mark for a ‘MONOPOLY’ Word Sign.
- Hasbro was already the owner of three Word Marks for ‘MONOPOLY’ at the time.
- Hasbro admitted to evergreening, citing its reason for doing so as administrative benefits.
- The EUIPO found that although it was administratively more efficient, and the admission alone could not prove bad faith, the evergreening did amount to abuse of the Trade Mark process.
Tesco v Lidl [2023]
- Lidl’s filing strategy, like the one adopted by Hasbro above, was brought to question.
- It had filed Trade Marks that covered most classes, or in one case, every single class of its previously registered Trade Marks.
- It was found that Lidl was acting in bad faith and potentially acting in abuse of the Trade Mark process.
How Can We Help You?
Clearly, the established practice of evergreening is now very much under the spotlight with the High Court having declared its stance, as shown above.
If challenged with allegations of evergreening, a company may be able to provide a satisfactory response, for example, that the intention was to use the mark, but circumstances, supported by clear evidence, rendered it unable to do so.
Company’s may now, therefore, begin documenting their filing process and reasons for undertaking their chosen methods, in an attempt to protect themselves from allegations of evergreening.
Our Team keeps abreast of the constant changes in both statutory and case law and provides clients with professional up to the minute advice whatever the nature of the issue which has arisen.
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