• Entrepreneur Michael Gleissner defeated in cases involving Apple and Samsung
  • Apple case in UK requires Gleissner to pay £24,500 following off-scale cost award
  • Samsung dispute in Benelux is ‘first in-depth case’ involving a Gleissner entity

Two recent trademark oppositions in Benelux and the UK have landed significant blows to prolific filer Michael Gleissner. Both rulings are strongly-worded and, according to one expert, clearly demonstrate that IP offices are “not a playground for vexatious parties”.

As we have extensively reported, German-born millionaire Michael Gleissner – who has assets claimed to be worth $300 million – has personally registered over a thousand UK company names in which he is the sole director. Those organisations were subsequently used as the applicant name on thousands of trademark applications around the world (which WTR compiled into a searchable database) – many of which have clashed with existing brands and are causing headaches for trademark lawyers and business owners (for example, we recently reported that Gleissner was responsible for 37% of all unpaid costs at the UKIPO since 2018).

The latest development occurred last week in a decision at the UK Intellectual Property Office. An entity owned by entrepreneur Michael Gleissner, Retina International Ltd, filed a trademark for the term RETINA on 5 January 2018, and the application subsequently was opposed by Apple in June 2018. A hearing was due to take place in June 2019 but this was vacated after the applicant withdrew the trademark application a day before the hearing. Due to the late withdrawal, Apple claimed there was an “abuse of process” and sought to be awarded costs. In the decision, which was handed down on November 15, Apple prevailed in that request, and was awarded £24,550.

This is not the first time that Apple and Gleissner have faced off at the UKIPO. Back in 2017, Apple was awarded costs of £32,600 following legal action against 68 applications (including the terms IPAD, IPHONE, IPOD and MAC).

As part of last week’s ruling, hearing officer Mark King was scathing in his assessment of Gleissner’s actions. “I agree with the point [that] Mr Gleissner’s actions appear to be part of a history of abusive conduct,” he wrote. “There are a number of cases whereby Mr Gleissner’s company’s conduct has evidently been found to be abusive. [...] Bearing in mind the history between Mr Gleissner’s companies and the applicant, and in the absence of an explanation or denial to the contrary, it does appear that the mark chosen was aimed at disrupting the opponent and along the way the UKIPO was used as the forum to disrupt its business.”

The decision means that Gleissner has 21 days to pay Apple the £24,500 in fees (which, while off-scale, is lower than what Apple requested). Talking to WTR, EIP partner Claire Lehr says that brand owners should see the ruling as positive. “Where a party’s conduct has been found to be abusive and there is evidence of an intention to disrupt the business of the other party, it is fair that an off-scale costs award is justified and the UKIPO will find in favour of the affected party,” she explains. “However, it is also clear from this decision that the UKIPO is not simply going to award rights holders costs in full or compensatory costs. The decision is, on the one hand, reassuring for trademark owners that off-scale costs awards will be made in the event of abusive behaviour by the other side, but it is also a clear signal that the time spent in dealing with an abusive party has to be justified and reasonable, anything excessive will not be taken into account in a costs award.”

That point was expanded on by Richard Ferguson, trademark attorney at Stobbs IP, who claims the ruling should be seen as a warning to parties like Gleissner that appear to be filing disruptive trademark applications. “It has shown that whilst [the UKIPO] is a cost-effective forum for legitimate disputes, it is not a playground for vexatious parties,” he explains. “It is clearly utilising its powers to award compensatory costs and is evolving its stance based on Gleissner’s pattern of abusive behaviour. The tribunal has awarded actual costs against Gleissner before, but its explicit acknowledgement here of its duties to protect parties from potentially abusive acts should provide some further reassurance for brand owners. Therefore, brand owners faced with Gleissner in future should consider seeking security of costs at the outset of proceedings.”

Across the Channel

Over at the Benelux IP office, another recent decision could have an even more significant impact. In a ruling handed down on September 18, technology company Samsung prevailed in an opposition against another Gleissner-owned entity, EBB Development Limited. In the case, Samsung claimed that EBB Development’s trademark filing for the term BIBBY was in bad faith and infringed its own mark for the term BIXBY. Similar to the Apple ruling, the judgment was scathing in its assessment of Gleissner’s activity (who is referred to as 'gedaagde sub 2' [‘defendant 2’] in the decision).

One of the key points of contention was of Gleissner’s use of trademark registrations in Pakistan. “The Pakistani trademark register is neither public nor fully transparent, because filings are not published within a year. As a result of this, not disputed by EBB, the Pakistani BIBBY brands were hidden from view and these brands did not come to light during worldwide research such as Samsung did,” the hearing officer noted. “During the [case], [Gleissner] stated that EBB renews Pakistani trademark registrations every six months in order to maintain the priority of these brands. EBB therefore 'refreshed' the Pakistani BIBBY brands with the intention of invoking a right of priority elsewhere. With registration in Pakistan and constantly changing it, EBB thus ensured that it had brand registrations that were constantly hidden from view, on the basis of which it could invoke priority elsewhere and register opposition. This strategy is confirmed by the statement of [Gleissner] during the case, that EBB only registered BIBBY as a trademark in Pakistan and the Benelux, ‘because such a registration is sufficient to attack an EU trademark registration’.”

Such an admission by Gleissner during the case is startling – but that wasn’t the only one. During the case, Gleissner appeared to admit the motives for his filing activity, saying in a statement: “We are building up a large brand portfolio for potentially useful brands. I invest in apps that need a name. All new technologies need a name. We have names/brands available for companies that need them. BIBBY is a name that is attractive worldwide because it is easy to pronounce. We would like to have the opportunity to use this brand. You must see it as the ownership of a piece of land where it is not clear beforehand what the destination is and/or what happens around it. Depending on the development, the value of that property can develop positively and can therefore be a good investment. This is also the case with the brands. The rights to these are comparable to real property and the value thereof can – depending on the circumstances – develop favourably, certainly if it is an attractive brand name such as BIBBY.”

This statement from Gleissner matches closely with an insider source who told WTR in 2017 that Gleissner was “farming” brands to sell or license. However, that motive can become problematic when placed under legal scrutiny. The Benelux hearing officer responded: “EBB apparently sees the BIBBY brand as an investment and speculates that its value increases because it is an attractive word for a brand and someone wants to use BIBBY (or a similar sign) as a brand. The established facts and circumstances with regard to the application for the BIBBY-Benelux mark indicate that this application was made for this speculative purpose. The application is therefore not made with a view to use according to the essential function of a trademark.”

While Samsung prevailed, its awarded costs of €1,793 were significantly lower than what Apple received in the UK. However, according to Turnstone partner Michiel Haegens, the case is a particularly important one for brand owners. “This is the first case in Benelux in which Gleissner’s activities were reviewed in-depth and were found to be unlawful, therewith following decisions outside Benelux,” he tells WTR. “It concludes that the second defendant (who can’t be anyone else but Gleissner) is liable because he was aware of the bad faith filing and has not taken any action to avoid this. To the contrary, he seems to have encouraged these actions.”

With over 1,300 trademark filings in Benelux, it is perhaps surprising that this is the first in-depth case involving Gleissner. However, Haegens says he expects more will follow. “The Benelux Office is certainly aware of Gleissner’s filing activities, but the registry has not yet been in a position to comment on his filing behavior because bad faith is not a ground in opposition proceedings and has only been a ground in nullity actions before the Benelux Office since March 2018,” he explains. “Given that fact, it is expected we will see more decisions involving Gleissner entities in the near future. And with the court judgement in the BIBBY case, there is no doubt that Gleissner is 1-0 behind when it comes to such proceedings.”

The mysterious activity of Michael Gleissner continues, although a clearer picture is beginning to emerge. For brand owners embroiled in legal action with the entrepreneur, the recent Apple and Benelux decisions could provide guidance on how hearing officers are treating relevant bad faith claims.

This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe