Re-filings of existing trade mark registrations are frequently used as a strategy to evade the use requirement. Pursuant to Article 15 (1) of the Community Trade Mark Regulation (CTMR), a mark must be put to genuine use within five years after its registration in the relevant territory in which it enjoys protection. This use requirement is circumvented where a trade mark owner simply files a new trade mark registration for the same mark shortly before the older mark becomes subject to the use requirement. The trade mark owner can then use the newer mark as basis for oppositions and can shelve the sign for future use without needing to fear revocation actions.

So far, no explicit provisions on Community level prohibit such strategic use of re-filings. Article 52 (1) (b) CTMR merely provides, in broad terms, for declaring invalid a Community trade mark that has been filed in bad faith. In section 4.3.3. of OHIM's procedural guidelines for cancellation proceedings, the practice of evasive re-filings is deemed to be in bad faith. However, not every re-filing will automatically constitute bad faith, in particular where the second application differs to some degree from the first – either in its graphic representation or in the scope of its specification. Such deviations may well indicate a legitimate interest of the owner in modernizing the mark. And the concept of bad faith as provided in Article 52 (1) (b) CTMR will not help an applicant to defend against an opposition based on a re-filed trademark. Rather, the applicant would need to launch a separate counter-attack against the opposition mark, seeking to have it declared invalid and applying for a suspension of the opposition proceedings for the duration of the invalidity proceedings.

OHIM in its case-law has opened up another option for applicants to ward off oppositions based on re-filings. In the decision "Pathfinder" (R 1785/2008-4 of 15 November 2011), the Fourth Board of Appeal held that proof of use extends to an opposition mark which itself is not yet subject to the use requirement, but is an identical re-filing of an older mark under the use requirement. In that case, the circumstances indicating bad faith of the opponent were particularly strong. Not only had the opponent admitted freely that he had re-filed the opposition trade mark in identical form to avoid attacks based on lack of use. He had also offered the mark to the applicant for sale. These circumstances differentiated the case from the "Pelikan" case (General Court, T-136/11 of 13 December 2012). In that case, the General Court acknowledged the legitimate interest of Pelikan to re-file its house mark with slight graphic alterations and with a narrower specification of services, in the context of modernizations announced for its 125^th anniversary.

After "Pathfinder", it has generally been thought that proof of use might only be requested for a re-filed trademark in opposition proceedings if the re-filing is an identical copy of the earlier trade mark – in terms of territorial scope, graphic representation and specification of goods and services. This has recently been put to question in the "CANAL PLUS" decision (R 1260/2013-2 of 13 February 2014). Here, OHIM's Second Board of Appeal held that several opposition marks of GROUPE CANAL+, SA and of CANAL+ FRANCE had to be considered re-filings for which proof of use must be presented. OHIM applied a liberal interpretation of "the earlier mark" in Article 42 (2) and (3) CTMR, for which proof of use is required. The "earlier mark" was said to mean not a specific trade mark registration but rather, more broadly, one and the same graphic representation of a mark for the same goods and services and in the same territory. Consequently, OHIM considered it sufficient that some of the services of the re-filed mark were identical to those protected by older marks. OHIM also thought it sufficient that an older French mark corresponded with a younger Community trade mark re-filing, and vice versa, since both covered (also) the same territory, France. Finally, OHIM even thought it possible that the following French trade mark constitutes a re-filing of the following older Community trade mark, even though they differed in their graphical representation:

The Board of Appeal concluded that proof of use must be adduced for those services and for that territory which overlapped with the respective older marks of the opponent. The Board then referred the case back to the Opposition Division to determine whether those trade marks with differing graphical features could be considered essentially identical to the extent that the younger Community trade mark must be deemed a re-filing of the older national mark.

We will await with interest whether this decision will broaden the path commenced with "Pathfinder" towards a wider interpretation of the use requirement in opposition proceedings. Right owners should in any case carefully review their trade mark portfolio and assess whether a potential opposition mark might be subject to proof of use because of earlier, (partly) identical registrations. More generally, the practice of re-filings should also be assessed strategically. Right owners will stand a better chance of asserting a re-filing if it contains graphical alterations, justifying a need for modernization. Mere changes in the specification of goods and services, on the other hand, can no longer be considered a safe re-filing strategy.