The summer, a time of inactivity: the media was in ‘silly season’, MPs recessed from parliament, and people holidayed. One person who kept busy, however, was Michael Gleissner (aka Mickmeister and Ken Arden), entertainment tycoon and mysterious IP bandit.
In July, Gleissner unsuccessfully opposed (O/327/17) an application for SuperVivo [word] (filed December 2015) for gaming services based on an earlier registration for vivo [word] for entertainment services (also in Class 41). Here, Gleissner generated the UK right by claiming priority in April 2016 from a Namibian right (backdating the effective date of the UK application within the 6 month grace period allowed under UK law to October 2015) , which leapfrogged SuperVivo. Whilst this practice is permitted, it illustrates Gleissner’s speculative accumulation of generic brands by filing in obscure territories and watching the trade mark registers.
In August, Gleissner (via a production company) obtained the domain name <tmview.com>. For those familiar with IP, TM View is a free trade mark search tool run by the EUIPO that covers a number of trade mark registers from around the world at www.tmdn.org. Amazingly, Gleissner has now used the domain to create a fake website that mirrors the official one – presumably to phish for new trade mark applications.
IMOVIE and MacX
Later in August, the UK IPO struck out Gleissner’s applications to cancel Apple’s IMOVIE and MacX trade mark registrations for non-use (see O-403-17). This followed on from an earlier decision between the parties (O-118-17), making a total of 70 applications struck out and a total costs award to Apple of £38,335.
Viva.com Trade Mark
The recent VIVA case (O/418/17) followed a typical Gleissner fact pattern: an application for Viva.com [word] as a trade mark via a company of the same name, Viva Technologies Limited. The application was for telecoms and media goods and services in classes 9, 38 and 41.
Importantly, Gleissner did not own the domain name <viva.com>. This application indicates that Gleissner may have been looking again to try to ‘reverse hijack’ the domain name (a practice of registering a trade mark after a domain name is registered to try and win a domain name complaint and force transfer), which he has done before (see slized.com UDRP decision)
The application was opposed by Viva Media GmbH, owners of VIVA [word] and VIVA (logo) for similar goods/services. The opposition was based on the marks being identical, a likelihood of confusion as well as unfair advantage/detriment to the repute / distinctive character of the mark and passing off, together with a claim that the application was made in bad faith. It is the bad faith finding that is interesting here.
Making out a case of bad faith in the UK is often more difficult than other trade mark grounds. There is a presumption of good faith in favour of an applicant unless an opponent can show bad faith (a multi-factor test), including conduct that falls below what would be reasonably expected in the trade. The issue that many brand owners have had with Gleissner’s UK conduct rests in a combination of a low bar in making out that an applicant has a bona fide intention to use a mark, with a high bar to establish bad faith.
Despite the high bar, the UK IPO found that Gleissner had no bona fide intention to use the mark. The key factors to this were his stockpiling of trade mark filings, his lack of use of ‘viva.com’ in the course of trade (and inability to do so as he didn’t own the domain name), his failure to provide evidence in reply and other coverage relating to his general activities. Viva.com was also found to be confusingly similar to VIVA, with the other grounds not considered in light of the two positive grounds already made out.
This is an important and welcomed decision for brand owners operating in both the UK and elsewhere, providing another decision against Michael Gleissner’s activities. The UK trade mark system is a world class, efficient and cost-effective place to file trade marks for prospective brand owners, but the UK IPO has signalled here that it is not willing to be the subject of abuse in the correct circumstances.
There have been various theories about Michael Gleissner’s activities, including whether he is attempting to speculatively accumulate a portfolio of generic shelf brands, register marks for domain name complaints, cancel marks as a modern day Robin Hood, or to extort money from businesses. For now, it remains to be seen what Michael Gleissner will do next.
One thing for sure is that brand owners large and small should remain diligent in checking their IP portfolio, particularly their trading name, domain name and trade marks. This will include assessing whether a mark should be refiled either due to vulnerability, a lack of coverage for potentially useful goods/services or the need to refine a mark to avoid it being trumped by a Gleissner filing (see, for example, Gleissner’s application for PURPLE v PURPLE COMPUTERS here). Brand owners may also wish to consider trade mark and domain name watching services to monitor for any third party activity that looks to encroach on their brand space.
Stobbs advises a number of clients from SMEs to multi-nationals on all aspects of brand protection, including trade mark filings, litigation and online brand enforcement. If you would like to discuss any of the issues discussed here, please give us a call.