Success against Gleissner for ‘PETRUS’ trademark
Novagraaf’s Trecina Surti outlines a recent success story in a dispute brought on behalf of a leading French wine producer. The case highlights the benefits of bad faith claims in opposition proceedings against Michael Gleissner.
In the past few years, there has been considerable publicity about Michael Gleissner and the volume of trademarks he has filed in the names of hundreds of different companies. Novagraaf has recently been able to secure a success story on behalf of La Société Civile du Château Pétrus, against one of Gleissner’s companies at the UKIPO, with an opposition decision issued on 2 May 2018 on the grounds of bad faith.
A case of bad faith
Petrus Limited International (one of the many companies owned and controlled by Gleissner) applied to register the mark ‘PETRUS’ in classes 3, 14, 25, 26 and 38. Novagraaf then filed an opposition on behalf of La Société Civile du Château Pétrus. Although Petrus Limited International did file a defence and counter-statement in return, it failed to file any evidence or submissions and did not appear at the hearing that took place on 20 March 2018.
While the opposition was based on La Société Civile du Château Pétrus’s reputation, earlier common law rights and bad faith, the decision was decided solely on bad faith (Section 3(6) of the Trade Mark Act 1994). Even though the applicant in the case was Petrus Limited International, the Hearing Officer stated that as Mr Gleissner is the sole Director of the company and he did not file any evidence to the contrary, his motives can be attributed to Petrus Limited International.
Much of the evidence Novagraaf submitted regarding Gleissner and his activities was hearsay evidence. This case confirms hearsay evidence can in fact add significant weight in any proceedings; especially when the evidence in this case backed up many of the facts about Gleissner himself. Additionally, Gleissner’s failure to dispute any of the facts added even more value to the evidence.
The decision references the case Ferrerro SpA’s Trade Marks [2004] RPC 28; although this is an old case, the law is still relevant in respect of stockpiling trademarks with no intent to use them. As such, once a prima facie case of filing trademarks without intent to use has been established, it is for the other side to answer the allegation. As in this case, Petrus Limited International failed to submit a response, which led to a decision against the company.
The decision also made reference to the case EUIPO v Copernicus Trademarks Ltd Case T-82/14, which refers to the point that filing a trademark registration, with no intent to use, except as part of a blocking strategy, is in fact an act of bad faith.
Impact on brand owners
Another decision, issued a day after the 'PETRUS' decision, marked another success against Gleissner, and his attempt to register the trademark ‘EASY’, filed at the UKIPO on 13 December 2016. The opposition against this application was filed by Easygroup Limited and the decision was based solely on bad faith; it also appears to mirror the main points stated in the ‘PETRUS’ case.
With the UKIPO issuing a number of decisions against Gleissner based on bad faith, it reassures brand owners that the Tribunal will not tolerate such conduct and should assist brand owners who find themselves having to defend their brands against such companies.
Trecina Surti is a Trainee Trademark Attorney at Novagraaf in the UK