Gleissner: Bad Faith in Benelux

A recent dispute has seen the notorious Mr Michael Gleissner fall foul of the rules on bad faith, facing defeat in the Court of Justice of The Hague. The decision will likely be welcomed by many brand owners who have been plagued by troublesome trade mark applications and oppositions involving companies controlled by Gleissner.

Background

Gleissner is believed to be the sole director of over 1,000 companies in the UK which are the named applicants on thousands of trade mark applications worldwide. Such trade marks are often identical or similar to existing marks and this extensive portfolio has seen Gleissner involved in disputes with many famous brands. The latest Gleissner debacle involves a dispute with Samsung in Benelux.

Court of Justice of The Hague

A dispute arose between EBB Development Limited (an entity of which Gleissner is the sole director) and Samsung Electronics Co over the registration of a trade mark in Benelux. On 2 November 2016 Samsung applied for an EU trade mark for the word ‘BIXBY’ in classes 9 and 42 for use as the name of its virtual assistant on Samsung Galaxy phones. On 28 February 2017, EBB filed an application in Benelux for the mark ‘BIBBY’ in classes 9, 38 and 41. On the same day EBB invoked priority on the basis of its three earlier registered marks filed in Pakistan on 10 October 2016 and filed an opposition action against Samsung’s EU application for ‘BIXBY’.

Following this, Samsung brought an action against EBB and an individual noted as Defendant 2 (Gleissner) for annulment of EBB’s Benelux ‘BIBBY’ mark on the basis of bad faith and infringement of its EU ‘BIXBY’ mark. The strongly worded decision of the Court of Justice of The Hague (available here in Dutch only) was handed down in September and discusses the prolific filing activities of Gleissner companies and the allegation of bad faith in some detail.

Concerning bad faith, EBB argued that the date of assessment for bad faith should be the priority date of the Pakistani marks. It was submitted by Samsung that the register in Pakistan is not publicly available and Pakistani registrations are only published after approximately a year. During the case Gleissner admitted that EBB renews the Pakistani registrations every 6 months in order to maintain priority. As such, the mark would not become publicly available and would not have appeared in research undertaken by Samsung prior to registration of the ‘BIXBY’ mark. Gleissner further confirmed during the case that EBB had only registered their mark in Pakistan and Benelux because such a registration is sufficient to attack an EU registration. Despite EBB’s objections, the Court confirmed that the relevant date for the assessment of bad faith was the date of application of the Benelux mark.

Considering the motive of EBB at the date of the application, it was noted that the ‘BIBBY’ mark is not and has not been in use and that EBB has no concrete plans for use. Gleissner confirmed at the hearing that he obtains such marks as an investment, in the hope of keeping them free and eventually monetizing them by selling or licensing them. Ultimately, the Court sided with Samsung and found that it followed from the evidence that EBB’s Benelux application had been aimed at bringing an opposition action against Samsung’s EU trade mark and further, that the application was made for a speculative purpose and therefore did not respect the essential function of a trade mark. As such the ‘BIBBY’ mark was filed in bad faith.

The Court also considered the thousands of trade mark registrations held by Gleissner companies and pointed to the hundreds of opposition proceedings, actions for non-use and challenges brought to domain names in the name of these companies on the basis of these marks. Samsung brought the Court’s attention to the numerous findings of bad faith in opposition proceedings by the UKIPO, as well as in UDRP proceedings at various arbitration institutes. The Court considered this brand strategy of Gleissner companies to be a further indication that the application for the Benelux ‘BIBBY’ mark was made in bad faith.

The Court allowed Samsung’s claim, declaring EBB’s Benelux ‘BIBBY’ mark to be void and awarding Samsung damages and costs.

Comment

The Court of Justice of The Hague has made a landmark decision in this case, as it is the first time the Benelux courts have dealt with the question of whether such filings could be annulled on the basis of bad faith. It is now clear that the Benelux courts will follow the trend amongst other courts and intellectual property offices in declaring applications such as this to have been made in bad faith. It is also clear from the decision that the Court considers brand policies such as those employed by Gleissner (through the various entities he controls) to be inappropriate and incompatible with the essential function of a trade mark.

This article has been co-authored by Francesca Gough.