- Nearly 2,000 additional applications seemingly linked to entrepreneur revealed
- Some appear to be for terms associated with established, well-known brands
- Leading in-house lawyer calls on IP bodies to do more and offer guidance
An expanded investigation by World Trademark Review can reveal nearly 2,000 more trademarks linked to entrepreneur and serial trademark filer Michael Gleissner. The total now spans over 4,400 marks across 38 jurisdictions around the world. As the scope of Gleissner’s massive filing operation widens, a leading in-house lawyer has called on IP bodies to offer guidance to brand owners affected by this unprecedented activity and to consider whether any action should be taken in response.
We have reported extensively over the past 12 months on German-born Michael Gleissner, who is described on Wikipedia as an “entrepreneur, film producer, director, screenwriter, actor, photographer and musician”. The multimillionaire appears to have made his fortune through being an early online pioneer in web hosting, including two years as a vice president at Amazon. Since 2003, he has founded companies including media production company Bigfoot Entertainment, TV channel Fashion One and domain subsidiary NextEngine Ventures. However, it is his rampant trademark filing activity in the past 12 months that has brought the entrepreneur to the attention of rights holders around the globe.
We first focused on Gleissner’s activities in August last year, when we reported that he had personally registered over a thousand UK company names in which he is the sole director. Those organisations were subsequently used as the applicant on hundreds of trademark applications that, due to the strategy of using so many different names, were near-impossible to effectively track. Last month, after a multi-week investigation, we presented a searchable document which collated more than 2,500 trademark applications and 5,300 domain names linked to Gleissner – the scope of which was described by one expert as more “sophisticated” than anything they had seen before.
To date, though, the reason behind this expansive portfolio has been unclear. Based on Gleissner’s large domain name portfolio, some commentators have assumed it is related to domain acquisitions. However, one anonymous insider denied this and told us that the business plan is focused on the creation of “brand incubators” that could raise in value over time. But unanswered questions are not unusual with these activities. We have asked Gleissner and his legal representatives numerous times for more information; the only response we have received is that “it is company and firm policy not to comment on any pending or recently concluded litigation or administrative proceedings, nor the strategy involved therein”.
In addition to the curiosity surrounding the sheer amount of filings, the issue has become a worry for many companies as a number of applications have been for terms related to established brands. Additionally, companies related to the tycoon have lodged revocation applications for existing registrations – for instance, we previously reported that the UK Intellectual Property Office ordered him to pay Apple over £38,000 in costs after it found that 68 applications to revoke marks owned by the tech giant should be struck out as an abuse of process. Earlier this month, the EUIPO Cancellation Division rejected an application from one of Gleissner’s company to revoke an Apple trademark for KEYWORD (with a further 119 revocation decisions centered on Apple marks to follow). In a rare move, the EUIPO considered that the applicant was trying to rely on Article 58(1) of the EU Trademark Regulation “for abusive ends”.
More marks revealed
Today we can present further research which has discovered nearly 2,000 additional trademark applications seemingly linked to Gleissner. The newly-collated data (which can be viewed as a standalone PDF or within an updated version of The Gleissner Files) vastly expands the scope of his activity, and will be of particular note to rights holders in Latvia, Portugal and Canada, where a significant proportion of the new marks were identified. The marks from Canada were discovered through the applicant name Brandster Branding. While these applications are not obviously related to Gleissner, there is strong evidence of a link – one of Gleissner’s UK company names is called Brandster, while over half (56%) of the terms being sought by the Brandster Branding applicant in Canada are being sought by Gleissner in other jurisdictions.
The marks prevalent in Latvia and Portugal were discovered using the applicant names CKL Holdings and Grigorius Holdings, which are both companies that appear to be owned by Gleissner. Similar to what we’ve seen in other jurisdictions, some of the Serbian trademarks appear to be for terms associated with well-known brands, including BRITISH AIRWAYS WORLD OFFERS, ENRON, LEHMAN BROTHERS, and numerous applications related to Apple (IMOVIE, IPAD, IPOD, and ITUNES).
As the map below shows, trademark applications linked to Michael Gleissner now exist in every major continent of the world. The two most popular jurisdictions used by the entrepreneur are the United States (with 1,052 applications to date), Benelux (935), the United Kingdom (663), Latvia (620), Portugal (460) and Canada (335). In total, nearly half (44.4%) of the applications have reached registration, with a further 51.3% still pending a decision (either through examination or opposition).
Jurisdictions in which Michael Gleissner-related entities have filed trademark applications (click for full-size)
With a trademark portfolio spanning all four corners of the world, the financial cost – according to our estimates – is now close to $1 million in filing fees alone. That figure will be significantly higher due to, among other things, the staff cost of responding to amendments and oppositions – of which there are numerous, with high profile opponents including Apple, BMW, US president Donald Trump and even rapper Snoop Dogg. Indeed, the cost and scale of the activity is unprecedented in scope, according to Robert Reading, director of custom & managed solutions at CompuMark. “We have seen unusual activity before, but only on a small, targeted scale – localised and relatively unsophisticated attempts to obtain trademark rights that clearly infringe well-known brands,” he explained last month. “However, the Gleissner group of companies operates in an entirely new way; it is more organised, more professional and relatively sophisticated. It's clearly a well-funded operation too, even if the ultimate aim is unclear and very persistent.”
Call for action
One of the most prevalent questions asked by impacted brand owners since we first started reporting on Michael Gleissner’s rampant trademark filing activity is: what can be done? We’ve spoken to numerous rights holders at businesses of all sizes, and nearly all are frustrated at the expense and time it is taking to oppose or challenge marks that, in their eyes, have little to no evidence of either use or intent to use. However, due to being in ongoing legal proceedings, most business representatives requested to speak off-the-record. On Gleissner’s part, requests for more information are consistently met with the same standard response.
Back in May, one small business owner, James Hart of Purple Computing, did speak to us, publicly calling on the UK Intellectual Property Office to take action, claiming the office is "not doing anything proactive to defend existing trademark owners". Angered at the opposition process, he said: “I am in a position where my total outlay might cost upwards of £3,500 in fees plus several days’ work in compiling invoices, website clippings and other documents which prove that I am actively using my five-year-old trademark. This is the evidence requested by the applicant as part of the dispute process, and they may then request further submissions at the next round of evidence, costing even more in legal fees and time. Why the hell should a company incorporated and submitting regular annual returns for seven years have to submit evidence of this nature to somebody with no tangible trading history?”
This week, the first major brand willing to speak out against Gleissner’s trademark activity reached out to World Trademark Review. Jody Tsigarides, lead IP lawyer at Britvic, told us that the company had recently concluded a legal battle with Gleissner’s legal representatives. The dispute was over a UK trademark application for the term TANGO, which Britvic opposed as it is the name of one of its most popular brands. Reflecting on the experience, he hoped to help other brands who may be embroiled in similar proceedings – either now or in the future. “I wish I could tell you that we achieved this by some wizardry of the law, but in truth, we just pushed back hard, opposed each classification and our grounds of opposition made it clear that we would rely on national reputation of our TANGO brand as well as to rely on bad faith,” he explained. “Lewis Silkin did a good and robust job, so I suspect that played a part too.”
The opposition featured a counterstatement from Gleissner, Tsigarides revealed, but eventually the trademark was withdrawn. The main takeaway for brand owners, he added, is to “maintain a hard line and rely on reputation if you have it”, although he suggested that “bad faith has to be a runner too”. Indeed, the question of whether some of Gleissner's trademarks are being filed in bad faith is one that Tsigarides feels should be considered by parties across the trademark industry. “Like most trademark professionals and brand owners, I am baffled, amazed and also slightly intrigued at how far reaching the activities of Michael Gleissner are,” he stated. “I think, though, that it has to be time that the various IP bodies come together to define a strategy for dealing with this. We intended on running a bad faith argument (amongst others) and surely we have reached a point where this argument would (or even has to) stick?”
In addition to calling on IP bodies to discuss whether action should be taken, Tsigarides suggests that there should be “cross departmental discussion” from parties raised in The Gleissner Files, including UK Companies House, the EUIPO, national registries and ICANN, to “ensure there is alignment” and “to offer guidance for brand owners”. This is no laughing matter, he says, and it is an issue that should be treated seriously: “I get that the actions of Michael Gleissner could be seen by some (or him) as Robin Hood-like, however, there needs to be a genuine intention behind each filing and each invalidity action that he files, which I suspect there is not. Furthermore, the day that the TMView website was cloned and when one of his entities filed a trademark application for EUIPO [he has filed two; one in Canada, another in Portugal], the line was well and truly crossed. Perhaps Gleissner could divert his trademark filing budget to a charity and truly help the poor.”
There is little doubt that the mysterious and unprecedented activity of Gleissner is causing headaches for trademark departments across the world. Whether other brands proactively echo Tsigarides’ call for action remains to be seen, but all eyes will now be on the major IP bodies to see if the issue will be discussed at high level. In the meantime, the filings continue.
Click here to access the full, searchable data set of Gleissner’s trademark and domain portfolio.