Old registration water pumps
The toy manufacturer still won thanks to an old French trademark registration held by Mattel, which also happens to be registered for water pumps. To get the broadest possible protection, you often see that companies register their brands with a wide scope. They cover all kinds of products for which they will never use the trademark, but it provides ample protection. And that’s how that neat Chinese pump trademark Mattel ended up without brand protection in Europe.
Don’t miss a beat
The Chinese, however, did miss a beat. In opposition proceedings, you can request the opposing party for proof. The opponent has to show that the trademark is used for the products requested for protection. If the opposition can’t prove use in the last five years, the opposition is rejected. It seems unlikely that Mattel could have demonstrated the use of the Mattel trademark for water pumps. However, the Chinese remained silent and did not use the opportunity to ask for proof. The issue of usage was never even on the table.
In our opinion, trademark applicants should not register their trademarks for all kind of products they have no interest in just to block the market. Moreover, well-known brands don’t even need to do it because, under certain circumstances, the law also gives them trademark protection outside their product category.
In the meantime, the highest European court has ruled on the practice of broad registrations. In the Skykick ruling, the European Court said that a trademark owner might act in bad faith if he registers his trademark for products he has no interest in. Incidentally, you cannot fall back on any bad faith in such opposition proceedings. That’s cause for a separate procedure.