Gleissner: the story so far
WTR has been reporting on Gleissner’s portfolio-building behaviour since 2016. As our coverage reveals, his activities and the legal disputes surrounding them have been truly unprecedented in terms of both scope and the risk for brand owners.
With assets claimed to be worth $300 million, Gleissner was an early pioneer in web hosting and spent two years as a vice president at Amazon. Since 2003 he has worked in multiple areas and is described as being an entrepreneur, a film producer, a director, a screenwriter, an actor, a photographer and a musician. What is more, he has founded a host of companies, including media production outfit Bigfoot Entertainment, TV channel Fashion One and domain subsidiary NextEngine Ventures, with evidence to suggest that he is based in the Cebu province of the Philippines.
However, it is his IP activities that have brought Gleissner to the attention of brand owners around the world. What began as a mysterious trademark and domain name-building exercise quickly became a major cause for concern among businesses of all sizes, drawing interest from IP offices across the globe.
The scope of Gleissner’s trademark portfolio first emerged in August 2016. Hundreds of trademark applications filed in the space of a few months prompted questions as to the motive. Unusually, the filings involved a complex web of more than 1,000 UK companies, which had been created for use as applicant names on filings around the world. This made the marks particularly difficult to track. It was not just trademark applications either; hundreds of single-word domain names owned by Gleissner were also discovered.
Gleissner’s trademark portfolio – which would continue to grow over the next few years – was astonishing in its size and reach from the outset. Masses of filings stretched to all four corners of the world, with the prevailing trend being single word marks that used common English terms across a variety of themes, including names (eg, ELIZABETH and JOHN), colours (eg, BLACK and GOLD), animals (eg, EAGLE and GORILLA), food (eg, CHOCOLATE and TEQUILA), chemical elements (eg, CARBON and GOLD), famous figures (eg, ARCHIMEDES and SHERLOCK) and internet culture (eg, MEME and SELFIE). Occasionally, these generic terms were also used alongside ‘.com’, as Gleissner attempted to secure trademark rights in domain names owned by others.
Concerningly for brand owners, some terms appeared to be directly related to major brands (eg, BAIDU, CATHAY, PARAMOUNT, SUPREME, TESLA and THE LEARNING CHANNEL). Video game brands were another common target, with filings for COMMODORE, HALO, MARIO, PARASITE EVE and SONIC, as well as a range of non-active major brands, including AIR AFRIQUE, ENRON, LEHMAN BROTHERS and PANAM.
Figure 1: Map of jurisdictions with recorded Gleissner trademark activity (November 2020)(click for full-size image)
Eight months after our first major report, a source related to one of Gleissner’s companies told WTR that the portfolio-building exercise was part of an unusual business strategy involving the farming of brands. In an interview that arguably led to more questions than answers, the source claimed that Gleissner’s activity was based on the philosophy of “creating a brand incubator”.
“Imagine farming a brand in a glasshouse,” the source expanded. “With the assumption that IP rights are assets similar to real estate, the whole thing was simply a way to invest in property. The market that Gleissner pictured, however, wasn’t a seller’s market (where he resells his assets), but a non-liquid owner’s market, where the value of his investments increases over time. In this case, there was not much intent for profit, but for owning.”
As hundreds of Gleissner’s trademark applications proceeded to examination, a number of small business owners reached out to WTR to criticise one particular IP agency: the UK Intellectual Property Office (UKIPO). In a stinging critique, the head of a small IT company questioned why the UKIPO was not providing sufficient protection for existing rights holders, claiming that the duty to oppose or seek cancellation of marks was too financially burdensome for most SMEs. “We’re essentially in a position where we can either defend our trademark or throw thousands of pounds we cannot afford into a black hole of legal fees, or suffer the potential long-term consequences of a severely diluted trademark if we do not defend it,” he said.
The comments reflected growing concern among brand owners over Gleissner’s trademark activity. What is more, they pointed to fundamental issues within the IP system. Spiralling legal costs were preventing many small business owners from moving forward with opposition proceedings. “Although we’re feeling victimised at the moment and may have to concede defeat in this case, there is a fundamental problem in the trademark system which is allowing this to happen,” our source admitted.
As Gleissner’s motives remained shrouded in mystery, a new enigma arose with the discovery of a website that he operated posing as the EUIPO’s search tool TMview. The site, located at ‘tmview.com’, had been running for over a year and at first glance seemed identical to the EUIPO’s multinational trademark search database. However, a closer inspection revealed that it was a copy of an earlier version of the site, with fewer office databases listed and the news sidebar depicting posts from 2015. When a term was keyed into the search bar, the site recorded the search and redirected users to the EUIPO’s website. As such, the site was believed to be a phishing page, which was recording trademark clearance searches, possibly in an effort to gather data to guide Gleissner’s own sizable portfolio.
Figure 2: Gleissner trademarks by application date (November 2020) (click for full-size image)
A year after WTR first uncovered Gleissner’s portfolio-building behaviour, we published The Gleissner Files, a searchable database of more than 5,000 domain names and 4,400 trademarks across 38 jurisdictions. From this, two common targets became clear. The first was British Airways, with trademark applications filed for BRITISH AIRWAYS EUROPE, BRITISH AIRWAYS WORLD OFFERS, BA EUROPE and ONE WORLD. The biggest target, however, was Apple. Dozens of trademark filings were uncovered relating to the tech giant, including APPLE, APPLEWORLD, IBOOK, ICAL, IMOVIE, IPAD, IPHONE, IPOD, ITUNES and MAC.
To this day, it is unclear why Gleissner singled out these companies. What was obvious, though, was the sheer scale of his portfolio. As the database revealed, hundreds of thousands of dollars were being spent on the operation. “We have seen unusual activity before, but only on a small, targeted scale – localised and relatively unsophisticated attempts to obtain trademark rights that clearly infringe well-known brands,” explained CompuMark director of government and strategy Robert Reading at the time. “However, the Gleissner group of companies operates in an entirely new way; it is more organised, more professional and relatively sophisticated. It’s clearly a well-funded operation too, even if the ultimate aim is unclear and very persistent.”
Over the next couple of months, WTR heard first hand from various business owners on the impact of engaging in a legal dispute with Gleissner. For the first time, evidence emerged that the multi-millionaire had failed to pay legal costs following a number of defeats in opposition cases. For one SME owner, Gleissner’s refusal to pay up was arguably another sign that his applications had been filed in bad faith. “Throughout my defence I claimed that the attack on my trademark was malicious and brought in bad faith,” our contact said. “Whilst I believe this to be true, it is very difficult to prove due to the multi-factor test. However, I believe that Gleissner’s failure to pay costs awarded against him should warrant the office to suspend any other current applications made by him and refusing future ones.”
In another major investigation, The Gleissner Oppositions, WTR revealed that Gleissner had been involved in approximately 7% of all live contested trademark cases in the United Kingdom. Of the decisions that had been rendered, Gleissner was unsuccessful in over 75% of cases. Although he had prevailed against some major brands, including Starbucks and TiVo, his low overall success rate was reflected in the net legal costs that he was ordered to pay. While unsuccessful opponents had incurred £1,500 in costs to Gleissner, the entrepreneur had costs totalling over £67,000 – £38,000 of which was owed to Apple for an abuse of process in an opposition case.
One key finding of WTR’s investigation was the so-called ‘Gleissner effect’. This referred to the fact that any mention of the millionaire in a case had always led to a successful verdict for the opposing party. In one instance, media evidence – including a number of WTR articles – was used to present an argument of bad faith. While the UKIPO hearing officer clarified that press reports are hearsay evidence, he noted that Gleissner had not disputed their accuracy and the opposition for bad faith succeeded. Another common finding, one attorney told us, was that Gleissner’s legal representatives tended to use “templates and would include often irrelevant, boilerplate statements, as well as errors”.
Across the Atlantic, a steep rise in so-called ‘trademark troll’ applications relating to Gleissner was unearthed in Canada. Following changes to the Canadian Trademarks Act, which removed the use requirement for new applications, a predicted influx of trademark squatting soon came to pass. More than 400 trademarks were filed in Canada covering all 45 classes of the Nice Classification System; analysis revealed that 96.9% of those were linked to Gleissner. One attorney hoped that the Canadian Intellectual Property Office would take action, suggesting a number of “creative objections” such as finding that the filings were made in bad faith.
In a surprising turn of events, former US president Donald Trump found himself caught in Gleissner’s legal crosshairs. After a trademark was filed at the UKIPO for the term TRUMP TV, DTTM Operations LLC – the New York-based entity that handles the intellectual property of the Trump family – filed an opposition against the application. On issuing its decision, the UKIPO used scathing language to blast Gleissner for his “disdainful disregard for the opposition costs of the other side” and for “adopting an indefensible position” that illustrated “a flagrant degree of cynicism”.
Another investigation in early 2019 revealed that Gleissner’s portfolio had continued to grow at a rapid pace the previous year. In one prominent example, two Gleissner-related entities – Grigorius Holdings SIA and Fashion One Television SIA – had filed 899 trademark applications at the Latvian Patent Office over the preceding 12 months – accounting for a staggering 40% of all trademarks filed in Latvia in 2018. Once again, a number of the marks were for popular brands (eg, BAIDU, IPAD and TESLA), with two filings targeting the EUIPO and over half reaching registration.
It was also discovered that Gleissner had been using the brand name of China’s most popular search engine to operate a company called Baidu Europe. As part of the operation, the company had set up headquarters in the Netherlands, which displayed a prominent logo (as well as a Chinese flag) on the side of the building, and various social media pages. As an increasing number of major brands became the target of Gleissner trademarks, the discovery of Baidu Europe raised questions as to whether the multi-millionaire could launch other similar entities.
Following his defeat the previous year, in 2019 Gleissner took President Trump back to court over the TRUMP TV trademark. The UKIPO comptroller general intervened in the case to decry Gleissner’s “gaming” of the trademark system and warn that, if left unchecked, it could bring the entire system into “disrepute”. In unconventionally scathing language, the comptroller general claimed that Glessner was operating “a myriad of non-trading and impecunious corporate entities” that were filing “unmeritorious applications time and time again”. As such, Gleissner’s appeal was rejected.
In May 2019 further research found that Gleissner-owned entities owed costs in at least 30 separate UK legal cases, accounting for 37% of all unpaid costs at the UKIPO. The findings were a stark reminder of the challenges facing individuals and small business owners that oppose Gleissner marks, who have little chance of recouping costs even if their case is successful. applications time and time again”. As such, Gleissner’s appeal was rejected.
Figure 3: Gleissner trademarks by current status (November 2020)
As 2019 drew to a close, Gleissner continued his pursuit of Big Tech with oppositions against Apple and Samsung. In the United Kingdom, Apple was awarded £24,550 after successfully claiming an abuse of process when Gleissner withdrew a trademark application 24 hours before a scheduled opposition hearing. Across the Channel, in the Netherlands, Samsung prevailed in its claim that a Gleissner application had been filed in bad faith. During the case, a number of startling revelations emerged, including Gleissner admitting on record that trademarks filed in Benelux and Pakistan were “sufficient to attack an EU trademark registration”. Further, he admitted that his audacious portfolio-building exercise was an investment for the future, comparing it to “the ownership of a piece of land” that could increase in value over time. Ultimately, a clearer picture was emerging as to what exactly the registrations would be used for – although the headache remained for brand owners.
By early 2020 the trademark community in Latvia had been observing Gleissner’s controversial activity for at least two years. In total, he had been linked to more than 1,500 trademarks applications, accounting for an incredible 26.3% of all filings in the country since the start of 2018. While some (eg, BRITISH AIRWAYS EUROPE, IPAD and THE LEARNING CHANNEL) were refused for being blatantly brand-related, others (eg, TESLA) succeeded to registration. In fact, nearly 70% of Gleissner’s applications in Latvia had reached registration. In addition, the Gleissner effect meant that oppositions had skyrocketed – more than doubling from 80 in 2017 to 168 in 2019.
The legal upheaval in Latvia was proving to be a significant challenge for local rights holders. “It is causing hardship for the businesses involved, absolutely,” one attorney said. “These are not big companies, even if their trademarks are quite well known in Latvia; they are not Apple or Amazon that can invest a lot of money to defend their trademarks.”
While the mystery over why Gleissner was filing thousands of trademark applications around the world continued to confound the IP community going into 2020, the fog finally began to clear when it was revealed that he had launched a brand consultancy firm called N-Cubator. This claimed to sell trademarks and domain names, and, according to its website, “fast track the laborious and costly search for a suitable brand” for companies in China and Japan. This followed the discovery of 120 trademarks filed at the EUIPO in December 2019 by an entity related to Gleissner called N-Cubator BV. There was also evidence that Gleissner had been using major brand-related marks for tangible goods and services, including offering a BaiduVPN software product.
Although not specifically about Gleissner’s activities, in April 2020 USPTO filing data revealed that Jonathan Grant Morton – who had assisted Gleissner for most of his trademark activity – was the leading representative at the office for the first four months of the year. However, Morton’s prolific prosecution work was actually due to a new avenue of work: Chinese applicants. Since the start of 2019, Morton had been the representative attorney on nearly 3,000 USPTO trademark applications from China. In comments to WTR, he pointed to the USPTO’s domicile rule change in August 2019 as the catalyst for his recent success. “It’s been a very positive move for the foreign clients that would normally file without the assistance of a licensed US attorney,” he said.
Despite the covid-19 pandemic raging across most of the globe, legal actions against Gleissner’s marks continued unabated. In another setback for the businessman, a decision from the EUIPO Grand Board of Appeal labelled his actions “an abuse of rights and process”. Attorneys for the opposing party said that the case demonstrated the importance of defeating “trademark trolls such as Gleissner” in order to “defend the individual rights of trademark owners but also to defend the trademark system in general”.
In arguably the most high-profile of Gleissner’s successes, in Summer 2020 Apple failed to defend its SHERLOCK trademark against a non-use cancellation claim before the Borgating Appeal Court in the Netherlands. The case began in 2017 when Gleissner entity Namib Brand Investments Ltd filed an application for the trademark SHERLOCK and subsequently challenged Apple’s 2004 mark for the same term. The case before the Norwegian appeal court hinged on whether Apple could prove its use of SHERLOCK – which had been registered in relation to a search tool used on its Macintosh computers until 2007 – within the last five years. However, the tech giant failed to prove such use. The case was a sober reminder that Gleissner is capable of prevailing against companies of any size.
In the largest WTR investigation to date, more than 6,800 trademarks and 6,900 domain names were identified as being directly related to Gleissner. Compiled into a searchable database, the findings revealed a portfolio so big that it put him on par with Apple, Amazon, L’Oréal, Samsung and Unilever as a leading global trademark filer. The data also uncovered an eye-watering level of expenditure – estimated at over $2 million in filing fees alone. “That’s not including the considerable expense put into litigation, and the huge overhead of maintaining a complicated web of domains, trademarks and corporate entities (eg, annual returns and tax),” one expert told us. “The result is that a vast majority of Gleissner’s portfolio appears to be simply pieces of paper with no obvious connection to actual products or services.”
On the positive side, the data also showed that the rate of trademark filings had slowed in 2020 – although this activity could resume at any time.
Table 1: Top 10 jurisdictions for Gleissner trademarks (November 2020)
|Country||Number of applications|
In an unprecedented decision, in late 2020 a Latvian court ordered that all trademarks owned by Gleissner’s Grigorius Holdings entity be put under prohibition. The decision meant that hundreds of Gleissner’s marks would be put up for auction in the future, following rulings that his actions amounted to “malicious behavior and bad faith”. The move was also a direct result of Gleissner’s use of shell companies, since the “untraceable background and non-existing bank accounts” of Grigorius Holdings meant that the court had few options to recoup unpaid legal costs. For affected brand owners in Latvia, who had often hit a brick wall when attempting to engage with Gleissner, the ruling was considered a significant success.
When the news emerged that the auction of more than 900 Gleissner-owned trademarks was imminent, rights holders were invited to voice their interest in bidding.of expenditure – estimated at over $2 million in filing fees alone. “That’s not including the considerable expense put into litigation, and the huge overhead of maintaining a complicated web of domains, trademarks and corporate entities (eg, annual returns and tax),” one expert told us. “The result is that a vast majority of Gleissner’s portfolio appears to be simply pieces of paper with no obvious connection to actual products or services.”