Jurisdictional perspective: Benelux
Two trademark experts in the Netherlands – Turnstone attorney Michiel Haegens and Leeway attorney at law Jos Klaus – reflect on the impact of Gleissner’s activities on the Benelux IP ecosystem.
Gleissner’s activities in the Benelux first came to light in 2015, with the filing of hundreds of applications for Benelux trademarks. Between 2015 and 2018, over 1,350 were filed by entities that could be linked to the serial entrepreneur. These numbers – together with the fact that Dutch addresses were used in the applications – suggest that the region had become an area of particular focus for him. However, that concentration of efforts also means that the Benelux has valuable lessons to offer frustrated rights holders elsewhere in the world. District and appeal courts, as well as the Benelux Office for Intellectual Property (BOIP), have now issued several decisions making it clear that Gleissner can indeed be successfully blocked.
A key question is what prompted this Benelux switch up? All the Benelux nations have international trade in their DNA and therefore relatively high numbers of IP filings, combined with a high-quality, cost-efficient legal system. That said, this new front may have more to do with the fact that English is one of the working languages of the BOIP and has been for years. As a result, filings (and possible oppositions) can be prosecuted in English. Further, in the period in which Gleissner was filing in the Benelux, there was no fee-per-class system – meaning that protection could be secured in three classes for the price of one. Finally – and perhaps most crucially – EU trademarks can be attacked on the basis of a Benelux registration.
A closer look at Gleissner’s Benelux trademark filings – including the nature of the marks, the recorded owner names and the lists of goods and services – reveals several interesting aspects. With regard to the nature of the applied-for marks, the vast majority were word marks consisting of first names (they were even filed in alphabetical order), topics from the news, dictionary terms and attractive general wordings, as well as well-known marks. For the latter, applications covered goods and services that were either somewhat related or completely dissimilar to the products for which the original mark was known. A similar pattern has been observed in other regions, including the European Union and the United Kingdom.
Although Gleissner filed a small number of Benelux trademark applications in his own name (including several Italian-sounding names such as FALZONE, PROVENZANO and RIZZA), most were in the names of so-called ‘ghost entities’. Thus, it was often not immediately apparent that Gleissner was behind a filing. The most commonly used were:
- CKL Holdings NV, which has addresses in the Netherlands and Belgium; and
- Fashion One BV and various UK entities, all established at the same address – Ingles Manor, Castle Hill Avenue in Folkestone, United Kingdom.
In 2020 Gleissner filed a large new batch of trademark filings, mostly outside the Benelux, in the name of a new Dutch entity: N-Cubator BV, established in the same location (Markt in the town of Swalmen, the Netherlands) as several of his other entities.
While the vast number of entities makes tracing filings back to Gleissner a challenge, the trademark firm Trademarkers Merkenbureau CV often features as the recorded representative. The company is unknown for other trademark work in the Dutch IP scene – all applications and oppositions for which this firm is the representative appear to be linked to Gleissner.
Not unsurprisingly, a number of Benelux applications filed in the name of a Gleissner entity have faced objections from prior trademark owners. Given that previse numbers and outcomes remain under the radar (unless an opposition was decided upon or a case brought to court), we have had to rely on our own experience and testimonials from IP colleagues. These indicate that it was often possible to establish contact with Gleissner or his team of representatives. Reactions on behalf of Gleissner suggest that he was well aware of the (im)possibilities of his position under Benelux trademark law. Often, a settlement was reached or an opposition avoided simply by means of a limitation in the list of goods and services set out in the Gleissner application. There seems to be no evidence of Gleissner offering to sell his mark or asking for payment of a sum of money to reach a settlement – a practice that one may expect to be part of the business model of such a serial filer.
What is surprising is that this large number of registrations did not lead to an avalanche of cancellation and nullity actions in the Benelux. However, as the first batch of applications from 2015 becomes vulnerable to cancellation, it is likely that we could see an uptick in such actions in the next few years.
Lessons from Gleissner cases in the Benelux
Oppositions against trademark applications in the Benelux must be filed at the BOIP. Appeal cases used to be brought before national, designated specialised appeal courts (eg, in the Netherlands, the Court of Appeal of The Hague). Since the European trademark reform package in 2017, appeal matters are now handled by the Benelux Court of Justice. Thus, both the BOIP and (supra-)national courts have experience with Gleissner cases, and there are a number of valuable precedents from which conclusions can be drawn.
For several years the Dutch system has provided for the possibility of a so-called ‘filing prohibition’ by which a (natural or legal) person is ordered to cease from filing specific trademark applications. Although rare, the Dutch Pink Ribbon (Case HA ZA 09-3707 – in which one of the authors, Jos Klaus, was involved) and Porsche matters (Case 200.213.285/01) in 2011 and 2018 suggest that filing prohibitions can be based on an abuse of law and may be successful, provided that certain criteria are met. The trademark owner must establish:
- that the applicant “knew or had to know that at least there would have been a serious chance that the application would not survive actions against the applications”;
- that actions by the trademark owner against the filings will become “unnecessarily costly”; and
- a pattern of (repetitive) filings for identical or highly similar signs to the invoked marks.
A downside to this is that the prohibition can only be addressed at specific entities; a broad order against, for instance, all group entities of the applicant has never been granted. Nevertheless, it may be useful for companies that have been broadly targeted by Gleissner’s filings.
In cases where no amicable settlement was reached, about 40 oppositions involving Gleissner were decided upon by the BOIP. One of the first occurred in 2015, when Dutch telecoms provider Royal KPN became aware of an application for the sign PN for telecoms services made by KPP Design Ltd. In the first instance – when Gleissner’s involvement had not yet been discovered – the BOIP rejected the opposition. In 2018 this decision was mostly overturned by the Court of Appeal of The Hague, which found that there was indeed a risk of confusion for IT and telecoms-related goods and services. In principle, opposition proceedings – as opposed to infringement proceedings – merely deal with a more abstract test as to whether a sign can be registered due to a risk of confusion. Nevertheless, actual circumstances must always be taken into consideration.
On appeal, the fact that the company was called KPP contributed to the risk of confusion for the PN sign. It was not only that PN resembled the word mark KPN, but also that the combination of KPP PN versus KPN increased the risk of confusion. Therefore, we would always recommend carrying out background research into the Gleissner entity in question and focusing on aspects other than just the sign – even in opposition proceedings.
Further, based on personal experiences of the appeal (one of the authors, Jos Klaus, was part of the team that successfully represented Royal KPN before the court of appeal), it may still be worth highlighting Gleissner’s background to add colour to the case. The grounds for filing an opposition have been extended since the EU trademark reform package was implemented in the Benelux Convention on Intellectual Property. Now, the fact that the earlier sign takes unfair advantage of or is detrimental to the distinctiveness or reputation of a reputed mark can also come into play. This additional ground may lead to an increased chance of success, particularly for owners of well-known brands.
The advantages of a tailor-made defence
Since the deluge of Gleissner filings appears to be on hold – at least temporarily – it is likely that there will be fewer opportunities to file oppositions. However, cancellation actions can still be filed against Gleissner marks. These can take place before the district courts as well as the BOIP. Although the Benelux system does not require an intention to use, bad-faith grounds provide plenty of opportunities in this respect.
In 2019 the District Court of The Hague dealt with a matter initiated by Samsung Electronics, owner of the BIXBY word mark, claiming invalidity of the bad-faith application for BIBBY by the Gleissner-owned entity EBB Development Ltd (Case C/09/553859). Samsung was successful in invoking bad faith and having the mark removed from the register. The fact that the BIBBY sign was applied for after Samsung introduced its BIXBY software to the public contributed to establishing bad faith. This also applied to a Pakistani priority right, which allegedly dated from before the BIXBY registration and was ‘hidden from view’ because these registers are not updated in real time. The court found that the constant “refreshing of the Pakistani registration” led to a situation in which Gleissner could invoke priority and, in combination with a later Benelux registration, could oppose later trademarks.
This strategy was admitted by Gleissner.
EBB Development Ltd defended itself by claiming that it “was building a large trademark portfolio for marks that can possibly be used in the future” and that there were “plans on the drawing board to introduce the mark on the market or to license it out”. According to the court, the speculative character of the filing did not comply with the goal of using the mark in conformity with its essential function.
The most recent case was the BOIP’s Oneworld decision in October 2020 (Case 300010). This is, as far as we know, the first Gleissner bad-faith invalidity case to have been handled by the BOIP since the adoption of the amended Benelux Convention on Intellectual Property. The claimant discussed Gleissner’s peculiar filing strategy and business model in detail and submitted a sizeable amount of evidence in this respect. While referring to the CJEU’s decisions in Lindt (Case C-529/07) and Sky (Case C-371/18), the BOIP stated that all relevant factors should be taken into account and that the (subjective) goal of the applicant should be determined based on the actual matter at hand.
The BOIP found that Gleissner had filed the disputed trademark in bad faith on the following grounds:
- He files enormous quantities of applications for a broad range of goods and services.
- No factual indication was presented – and it is highly unlikely – that he would become active under these brands.
- He is involved in multiple IP-related proceedings worldwide.
- Gleissner’s defence that a trademark is a “desirable object” with “potential” did not alter this conclusion. As a result, the Gleissner mark was cancelled.
Given the BOIP’s considerations, it appears that all Benelux trademark registrations in the name of Gleissner or one of his entities and for which Gleissner cannot provide a solid reasoning that makes sense could be vulnerable to immediate cancellation based on bad faith.
Future strategies for Benelux rights holders
Since Gleissner has focused his filing activities heavily on the Benelux, it comes as no surprise that several relevant decisions have been issued by the IP offices and courts of Benelux member states, particularly the Netherlands. Although a filing prohibition may be something of a reach, several successful opposition proceedings before the BOIP, as well as cancellation proceedings before both the courts and the BOIP, demonstrate that it is possible to combat Gleissner’s filings.
Both the courts and the BOIP have shown that Gleissner’s strategy in general, and certain filings in particular, do not survive the ‘Benelux test’. From the case law, it is clear that the authorities value background information and investigation reports on Gleissner’s peculiar business activities, for which – as has been found in multiple decisions – no sensible business model seems to be present. This has exposed critical in most, if not all, of his Benelux registrations. Moreover, as Gleissner’s marks become susceptible to non-use, a valuable second ground to successfully attack these registrations is becoming available.