In December 2017, the UK Intellectual Property Office (IPO) dismissed an appeal by a Michael Gleissner-owned company, CKL Holdings NV's ("CKL"), and held that its application for ALEXANDER had been made in bad faith. Geoffrey Hobbs QC, sitting as an Appointed Person, rejected CKL's appeal in relation to opposition proceedings brought by Paper Stacked Limited ("Paper Stacked"). (See here for a link to the decision.)
If you are wondering why this decision is noteworthy, then perhaps you haven't heard of Michael Gleissner.
Who is Michael Gleissner?
The mysterious activities of Mr Gleissner have been attracting the attention of IP lawyers, commentators and brand owners for some time now. Fieldfisher are representatives on record for many different brand owners who are embroiled in disputes with one of the Gleissner companies and in fact as at 30 November 2017, a Gleissner controlled entity was a party to 97 live (5%) contested trade mark actions before the UK IPO.
Mr Gleissner has filed thousands of trade mark applications worldwide and is the sole director of hundreds of different companies. In fact, he is the sole director of hundreds of UK companies. Mr Gleissner's prolific filing habits have certainly caught the attention of many as the intentions behind Mr Gleissner's activities are unclear. An internet search for Mr Gleissner suggests he is an e-commerce entrepreneur and film producer who owns a company called Bigfoot Entertainment. Paper Stacked's evidence suggested that Mr Gleissner trades in domain names and uses registered marks to obtain ownership of them. There have been various speculations published including in World Trademark Review regarding Mr Gleissner's motives, but the truth is no one really knows.
However, we do know that Mr Gleissner's activities are bold. In April 2017, a handful of the Gleissner companies applied to revoke 68 UK trade marks applications owned by Apple on the grounds of non-use. Whilst these revocations were struck out as an abuse of process, it does highlight the extent of his activities. Mr Gleissner would have expended a not inconsiderable sum in revoking all of the 68 applications, so he clearly has financial means.
Background to the current dispute
CKL sought to register the mark ALEXANDER for goods in classes 18, 20 and 25. Paper Stacked's opposition was successful and the application was refused on the grounds of bad faith (section 3(6), Trade Marks Act 1994). Paper Stacked's notice of opposition stated "the Applicant has no bona fide intention to use the mark. The Applicant has filed several hundred trade mark applications in numerous territories (mostly within the European Union), the majority of which comprise of common first names."
It is worth noting that in order to file its application, CKL made a declaration (in accordance with section 32(3) of the 1994 Act) that it had a bona fide intention to use the mark in relation to the goods and services contained within the application.
CKL filed a counterstatement denying the grounds of opposition, and maintained that it had acted lawfully in respect of filing the application. It further claimed that the bona fide intention to use the mark should only be assessed after the five year non-use grace period had passed.
Evidence filed by Paper Stacked
In the opposition, Paper Stacked filed a "voluminous" amount of evidence which helped to paint a picture of Mr Gleissner's filing habits and activities. Evidence worthy of note include the following:
- CKL has registered a number of distinctive names such as EUIPO and TESLA in Benelux and holds an international registration for BAIDU (one of the largest internet services company in China);
- CKL owns hundreds of marks which consist solely of common first names and names of colours. Paper Stacked included examples of CKL using marks consisting of first names to oppose third party EU applications consisting of full names i.e. ALEXANDER SMITH and ALEXANDER BENNETT;
- Six of the eight applications applied for by CKL in the UK were opposed by third parties (which differs from the usual 4.5% opposition rate at the UKIPO according to the evidence);
- Mr Gleissner is a director of over 1,200 UK companies, one of which includes EUIPO International Ltd; and
- Finally, CKL's evidence included references to a LinkedIn profile of the trade marks manager at another of Gleissner's companies. The manager previously listed "manipulating trademarks to reverse hijack domain names through UDRP" and "exploitation of legal instruments such as 'priority chains' in country members of the Paris Convention" in his job responsibilities. This manager was also the signatory of CKL's counterstatement in the opposition.
CKL did not file any evidence of its own but argued that there is a presumption of good faith unless the contrary is proven. In short, CKL argued that the evidence presented by Paper Stacked did not establish a sufficient basis on which to reject the application on the ground of bad faith.
Appeal decision
Whilst we do not propose to review the law of bad faith in any great deal, particularly as they are well ingrained in case law, Mr Hobbs QC referred to Arnold J's judgment in Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929 (Ch) and Copernicus-Trademarks v EUIPO (EU:T:2016:396). Mr Hobbs QC acknowledged that Copernicus is currently under appeal to the CJEU, but stated that the paragraphs of the judgment referred to in his decision are of value. In Copernicus, the EU General Court upheld a finding of bad faith in relation to an application which formed part of a wider strategy for filing applications simply to block third party applications and then re-file once the five year "grace period" ended.
Mr Hobbs QC upheld the decision of the Hearing Officer. In coming to his decision, he referred to the fact that the Registrar has filed written observations in relation to the appeal which stated that:
- At 30 November 2017, Michael Gleissner was a director of various entities which all communicated from the same email address. These entities were party to 97 live contested UKIPO trade mark cases;
- Although the number of cases involving Michael Gleissner's companies has reduced in recent months, At one stage, they amounted to 8% of all the contested UK cases;
- The various Gleissner entities very rarely file any factual evidence before the UKIPO. However, despite this, a high proportion still proceed to a final decision. For example, in November 2017, 42 final decisions were issued and 19% of those related to an entity communicating from the Gleissner email address.
Advice for brand owners
Whilst this decision is interesting, the key message to brand owners is to stay vigilant. We have observed if the matter is defended the Gleissner entities have on several occasions backed down. Failure to stay vigilant can have serious consequences, affect marketing plans and result in unnecessary costs. However, the good news is that this decision highlights that the UKIPO are alive to the activities of Mr Gleissner, although Gleissner entities have had some success, this recent decision suggests his luck may be turning.