We’ve come to expect a steady stream of trade mark decisions involving Michael Gleissner. We have previously reported on this enigmatic and admonished trade mark troll (see here and here along with WTMR’s coverage here), who has now turned his focus upon British Airways.
A UK trade mark can be cancelled on the basis that its owner has not used it for a continuous period of 5 years. This can be the 5 years post-registration or another later period e.g. 5 years preceding the filing date of the revocation action.
Michael Gleissner filed eight non-use revocation actions against several B.A. trade marks, namely CONCORDE (O-589/17), B.A. (O-590/17), SPEEDBIRD (O-588/17),CITY FLYER (O-591/17), BUSINESS LIFE (O-592/17), TO FLY TO SERVE (O-593/17), SKYFLYERS (O-594/17), CLUBWORLD (O-587/17). Unlike in other cases, Gleissner does not appear to have filed any trade mark applications that correspond with the marks under discussion. Applying for revocation of trade marks for non-use under these circumstances feels more brazen than the thinly veiled previous attempts to provide an interest / justification to launch such actions.
Gleissner appeared at the hearing as a representative. Overall, six of the marks were partially cancelled (CONCORDE, B.A., CITY FLYER, TO FLY TO SERVE, SKYFLYERS and CLUBWORLD), one fully cancelled (SPEEDBIRD), and one maintained in its entirety (BUSINESS LIFE) thanks to a narrow specification.
The consequence of this conduct can have huge implications. At one end of the spectrum, a company can lose coverage for house brand identifiers such as B.A. At the other, licensees can be hit hard through the loss of legal rights in a heritage brand like CONCORDE. In the latter case, licensees have a vested interest and should work closely with the registered trade mark owner during evidence collation to ensure that the best evidence is put forward. Failure to do so can lead to holes in the coverage of a brand’s trade mark portfolio.
The worrying scenario here for brand owners is that an application to cancel a UK trade mark can be filed by any person, i.e. they do not have to have a competing interest in using the mark. In addition, UK revocation cases in the UK can be run cheaply, with Gleissner here simply filing the action, putting the other side to proof, and sitting back to see how the proverbial trade mark use chips fall. Such non-discriminate filings are typically rare but here Gleissner appears to be a man on a mission, and with the financial means to do so against a number of brands, large and small.
Stopping such a pattern of conduct by Gleissner is difficult, despite the consternation of many brand owners. The UK courts can stop vexatious litigants either via the Attorney General applying to the High Court for an order stopping a claimant or a court making a Civil Restraint Orders (CRO). However, here, Gleissner’s applications were not without merit insofar as the targeted trade marks were generally found not to have been used for at least some goods/services covered by the relevant registrations.
We have previously commented on this blog that brand owners may wish to ‘Gleissner-proof’ their trade mark and domain name portfolios by carrying out an audit. Where brands are on the receiving end of simple non-use actions from Gleissner (i.e. where he has not filed for a similar trade mark as well, such that the combination of this with a successful non-use action would make him the owner of earlier rights), re-filings for the goods/services under attack should be considered. B.A. does not appear to have done this, with other registrations corresponding to the above brands also vulnerable to attack.
Attack can also be the best form of defence, as demonstrated by drinks company Britivic. Britivic opposed Gleissner’s application (here) for its well-known drinks brand TANGO, with Gleissner ultimately withdrawing the application. The application was, in typical Gleissner fashion, filed in the name of Tango International Ltd, although no challenge to the company name appears to have been made as yet. Ensuring that trade mark, domain name and company name watches are in place for core brands is also advisable so that issues can be dealt with proactively and holistically.
Whether Gleissner will turn his attention to other jurisdictions in 2018 remains to be seen. For now, B.A.’s trade mark wings have been clipped.