Gleissner trade mark application is Trumped

Many seasoned trade mark practitioners will have come across Mr Michael Gleissner at some point during their careers. Mr Gleissner is well known for his companies' enthusiastic [some might say overenthusiastic] filing of trade mark applications, oppositions and cancellation actions, particularly in relation to famous trade marks and high-profile companies. Popular consensus suggests that Mr Gleissner does this with commercial gain in mind [and not for the sheer, heady love of trade mark procedure].

Readers might remember Mr Gleissner from such previous trade mark actions as Sherlock Systems CV v Apple Inc (concerning 68 applications to revoke trade marks owned by Apple for non-use) and CKL Holdings Limited v Paper Stacked Limited (the "Alexander" case), which involved two of his more than 1,000 other UK-registered companies). A key question before Mr Justice Carr in the latest episode of the Gleissner saga, Trump International Limited v DTTM Operations LLC [2019] EWHC 769 (Ch) (an appeal from the UK Intellectual Property Office (UK IPO)), was whether the Hearing Officer was wrong to take into account evidence of Mr Gleissner's activities in unrelated actions in finding that Trump International Limited's application was made in bad faith.

Trump International Limited (no connection with Donald Trump; sole director: Michael Gleissner) applied to register a UK trade mark for TRUMP TV in classes 38 (communication and broadcasting) and 41 (entertainment and education). The application date was 30 October 2016, a day before Trump International Limited was incorporated, and less than three months before the inauguration of Donald Trump as President of the United States of America.  DTTM holds and administers (among other things) trade mark registrations previously owned by Mr Trump, although it no longer has links to him. DTTM opposed the application on several grounds (based on its prior registered and unregistered rights, and bad faith). It filed extensive evidence of the past activities of Mr Gleissner's companies, DTTM's trade mark rights, and the lack of connection between DTTM and Trump International. Trump International filed no evidence, although did file some submissions distinguishing this application from the Apple case (above) and asserting that Trump International should benefit from its corporate veil (i.e. it should be treated as legally distinct from Mr Gleissner).

Just another weekend at the Trump links

Neither party requested a hearing, so the decision was made on the basis of the written submissions. The Hearing Officer refused the application on the ground of bad faith alone. He did not proceed to rule on the other grounds of opposition.

Appeal fails bigly

Trump International appealed the decision on three grounds:

1. In making his finding of bad faith, the Hearing Officer wrongly accepted and relied upon the evidence of Mr Gleissner's activities in unrelated actions. Trump International argued that Mr Gleissner was not a party to the proceedings but, having been convinced that Mr Gleissner was a "bad apple", the Hearing Officer then allowed prejudice and bias to influence his decision. The judge firmly rejected any allegations of actual or apparent bias. Evidence of Mr Gleissner's activities was relevant and admissible (as it was in the Alexander case). The Hearing Officer was right on the basis of this evidence to make a prima facie finding of bad faith, which Trump International failed to file evidence to rebut. 
2. The Hearing Officer erred in failing to make any findings in relation to the other grounds of opposition, while taking such grounds into account in awarding costs. There was no separate appeal in relation to costs, so this ground of appeal was unsustainable. Further, because the finding of bad faith was correct, a finding on the other grounds of opposition would not have changed the outcome for Trump International. Nevertheless, the judge suggested that as a matter of good practice, the Hearing Officer should have stated his conclusions on the other grounds. It was obvious that these grounds would have been made out, but had the appeal on bad faith succeeded, it might have become necessary to remit the case to the Hearing Officer. 
3. The hearing should have been stayed pending the CJEU's judgment in the Skykick referral. Nicholas Caddick QC (sitting as a deputy High Court judge) had already refused the same application by Trump International on 17 December 2018. No appeal to renew that application was filed, so this ground failed. In any event, in his finding of bad faith the Hearing Officer did not rely on any statement of Trump International's intention to use the trade mark applied for. The finding of bad faith was not on the basis of lack of intention to use. Therefore, the outcome of the Skykick referral was irrelevant.  

Trump International also attempted to file new evidence, but this application failed. The evidence could have been filed before the first instance hearing; the evidence was not credible; and it would not have made a difference to the result of the case.

How to solve a problem like Michael

The Comptroller General of Patents, Designs and Trade Marks (on behalf of the UK IPO) was granted permission to intervene. As the judge noted, this was the first opportunity the High Court has had to consider a case involving Mr Gleissner.

The submissions on behalf of the Comptroller focused on the edited highlights of Mr Gleissner's trade mark career e.g. in 2016, Gleissner entities applied for over 800 UK trade marks; as at 30 November 2017, Gleissner entities were involved in 97 live contested trade mark cases before the UK IPO (5% of the total); and Gleissner entities have 49 unpaid costs orders against them.

In response to the Comptroller's request, the judge provided some interesting guidance. In general, he endorsed the approach taken by the UK IPO to date. He did however add:

• The Registrar has the power to strike out as an abuse of process proceedings brought for an ulterior and improper purpose. This power must be exercised with caution, but where a prima facie case of bad faith is established and no evidence to the contrary is filed, it may well be appropriate to exercise this power. 
• Section 32(3) of the Trade Marks Act 1994 requires (at least for now) that a trade mark applicant must state its good faith intention to use the mark applied for. If such a statement is made in respect of a well-known third-party trade mark to which the applicant has no connection, this may give rise to an infringement claim. The court is empowered to grant various remedies in an infringement claim, including preliminary injunctions and non-party costs orders.   

Comment

Trump International Limited chose for this appeal to be heard by the High Court rather than the Appointed Person. This was an odd choice. Choosing the High Court risked (i) this intervention by the UK IPO; (ii) a stronger precedent adverse to Trump International; and (iii) an increased likelihood of a substantial (i.e. off-scale) costs order.

We cannot be sure what Mr Gleissner was thinking, but it is possible that he believed that the Appointed Person would be less sympathetic than the High Court regarding Trump International Limited's application for a stay pending the CJEU's judgment in Skykick [or perhaps even that the Appointed Person would be unable to grant such a stay, even though they would be entitled to do so under section 62 of the Trade Marks Rules 2008]. As it went, the court was unsympathetic, and Mr Gleissner has ended up with a bloody nose.

The highlight of the judgment is undoubtedly paragraph 54 (emphasis added):

"Finally, as to Mr Gleissner's concerns that the Decision may prevent him, or companies which he controls, from filing trade mark applications in the future, that depends on the nature of the mark filed. If it has no connection with a third party (for example an application to register "GLEISSNER TV") then the Decision should not prevent such an application. Absent evidence to the contrary, such an application would not be made in bad faith. However, if the application is in respect of a sign which is identical or similar to a mark owned by a third party, of which there are many examples in the evidence, then he is right to be concerned. Such applications should not be made in the future, whether by Mr Gleissner or by companies which he controls."

This judgment does not close the door on Gleissner-controlled entities being involved in UK IPO proceedings in future, but it is likely to present an obstacle. Brand owners should be vigilant: it is possible that Mr Gleissner's attentions will turn to other jurisdictions.