Gleissner fails again in aptly-named UK trade mark invalidity action

To trade mark professionals, Michael Gleissner is a man who needs no introduction. The avid collector of registered trade marks (and unpaid costs orders) recently lost two registrations for PARASITE-related marks in a UK Intellectual Property Office invalidity action (decision here). This continues a trend of rightsholders successfully taking a stand against the activities of Mr Gleissner and his web of companies; a small piece of good news in generally difficult times.

Background

During 2017 Gleissner's corporate vehicle, Fashion One (Europe) N.V., filed and registered UK trade marks for PARASITE EVE in classes 9, 16 and 28 and PARASITE in classes 9, 25 and 42. "Parasite Eve" was a popular vide ogame created by the applicant in the invalidity action (Square Enix). Parasite Eve was first released in 1998 and spawned two sequels: "Parasite Eve II" (1999-2000) and "The 3rd Birthday" (2010-2011). The evidence showed that the latter two titles were and (in modest quantities) continue to be sold in the UK and that the series was popular, even if not a "cult classic".

In 2018, Trademark Merkenbureau CV, another Gleissner vehicle, successfully revoked Square Enix's 2000-registered EUTM for SQUARE ENIX for non-use (the decision has been appealed). Following the revocation decision, Gleissner filed applications for PARASITE EVE and PARASITE in the UK, Benelux and Latvia (no use of these marks by the proprietors was claimed or proven) and the UK applications were registered without opposition.

Square Enix relied on sections 5(4)(a) (passing off) and 3(6) (bad faith) (cf. section 47) of the Trade Marks Act 1994 to invalidate the UK registrations. The Latvian registrations had already been invalidated on the basis of bad faith, a fact relied upon by Square Enix. The Latvian court found that "[Gleissner's] attempt to register a nearly identical mark is not accidental, but is a deliberate, repeated, international operation with the specific purpose of appropriating trade marks and domain names belonging to others and the profiting at the expense of those trade marks and domain names and impeding trade mark owners from doing business ... [this] constitutes a manifestly unfair act." 

A few days before the hearing and with the writing on the wall, Gleissner attempted to sidestep the UK IPO hearing by surrendering the registrations. Not so fast: the Hearing Officer (Ms Perks) looked to the decision of Geoffrey Hobbs QC as the Appointed Person in BL-O-170/07, which suggested that revocation/invalidation actions may continue in spite of surrender because the surrender takes effect from the effective date of surrender (and not ab initio), so the pending action does not necessarily become moot. The hearing therefore took place in December and the Hearing Officer's decision was issued earlier this month.

The decision

Gleissner lost, unsurprisingly, despite some...creative...counter-arguments.

The points most likely to be of general interest were:

• The Hearing Officer (correctly) held that consumers would understand the sign PARASITE EVE as denoting not just the title of video games, but also the "official seal that the goods are provided by [Square Enix]". The third game ("The 3rd Birthday") did not contribute to this goodwill, even though it featured common characters with the earlier games. However, this did not make a difference to the final outcome. 
• The applications were clearly made in bad faith. The Hearing Officer relied on several factors, including the above decision of the Latvian court and Gleissner's filing at around the same time as the UK applications of (i) the EU cancellation action; and (ii) applications in other EU countries. At the hearing Gleissner justified his actions, somewhat flimsily, on the basis that unused marks needed to be released and "the necessity for technology companies to secure brands". The Hearing Officer was willing to admit this similar fact evidence (referring to the recent Trump International decision of the High Court in doing so). She also relied on the CJEU's judgment in SkyKick (which was issued between the hearing date and the date of the decision), specifically "if the applicant for registration...had the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining...an exclusive right other than those falling with the functions of a trade mark". She found on the evidence that Fashion One had no (genuine) intention to use its registrations in accordance with the essential function, and therefore the applications for such registrations were made in bad faith. 
• This allowed the Hearing Officer to conclude that in making the applications, Mr Gleissner had an intention to deceive, leading to an inference of deception of consumers. The remaining elements of passing off were also present, so the application under section 5(4)(a) also succeeded. 

Comment

SkyKick or no SkyKick, the likely outcome of this invalidity action was quite predictable from the start. This decision joins a growing number of anti-Gleissner precedents, and it is clear from this decision that such precedents do have significant persuasive power. This GuestKat would urge all IP owners who are in a position (both by unfortunate circumstance and financially) to obtain a ruling against a Gleissner entity to do so; this would be something of a service to the wider IP community!

Survival horror games were always Mr Floofy's favourite