General Court: Waterdrop Trade Mark Refiling Can Be Bad Faith

• The General Court ruled that refiling a trade mark to avoid genuine use requirements can constitute bad faith.
• This decision was made in the case Qingdao Ecopure Filter Co. Ltd v EUIPO (Waterdrop), case T-541/25.
• The specific practice targeted involves refiling a few months before or after the five-year grace period for non-use expires.
• Such an approach, if deemed bad faith, can lead to the invalidation of the refiled trade mark.
• This ruling emphasizes the need for genuine use strategies over procedural circumvention.

The finding that such a strategy can constitute bad faith introduces a critical legal precedent that could jeopardize the validity of refiled marks.

The General Court has issued a significant decision regarding the practice of refiling trade marks, specifically addressing scenarios where such actions might be deemed to be in bad faith. In the case of Qingdao Ecopure Filter Co. Ltd v EUIPO (Waterdrop), identified as case T-541/25, the Court determined that attempting to circumvent established requirements for trade mark use through strategic refiling could lead to the invalidation of the mark. This ruling underscores a strict interpretation of trade mark law, particularly concerning the obligations placed upon proprietors to genuinely use their registered marks.

This particular judgment from the General Court focuses on the practice of renewing a trade mark by filing a fresh application shortly before or after the five-year grace period for non-use concludes. While this might appear to be a straightforward administrative maneuver to extend protection without demonstrating genuine use, the Court has clarified that such a strategy carries substantial risks. The outcome of the Waterdrop case indicates that this seemingly simple approach could result in the refiled trade mark being challenged and ultimately lost due to a finding of bad faith on the part of the applicant.

Trade mark proprietors frequently encounter difficulties in demonstrating the genuine use of their marks, a requirement that can often prove to be a demanding and resource-intensive undertaking. The legal framework mandates that a registered trade mark must be put to genuine use in connection with the goods or services for which it is registered within a specified timeframe, typically five years from registration. Failure to do so can render the mark vulnerable to revocation actions.

In light of these challenges, some brand owners have explored alternative methods to maintain their intellectual property rights, including the strategic refiling of their trade marks. The idea behind this approach is to initiate a new registration process, effectively resetting the clock on the five-year grace period for non-use. This tactic is often considered particularly appealing when the original grace period is nearing its end, either a few months before or shortly after its expiration, as a way to avoid the burden of proving genuine use for the existing registration.

The General Court's decision in the Qingdao Ecopure Filter Co. Ltd v EUIPO (Waterdrop) case sends a clear message to brand owners and legal practitioners about the perils of employing trade mark refiling as a means to bypass genuine use obligations. The finding that such a strategy can constitute bad faith introduces a critical legal precedent that could jeopardize the validity of refiled marks. This ruling reinforces the principle that trade mark registrations are intended to protect marks that are actively used in commerce, not merely to reserve rights indefinitely without commercial application.

This judgment highlights the importance of developing robust strategies for demonstrating genuine use rather than relying on procedural workarounds. The potential for a refiled mark to be invalidated on grounds of bad faith means that the perceived ease of this approach is deceptive, carrying significant legal and commercial risks. Consequently, legal counsel should advise clients that any attempt to use the trade mark refiling grace period to avoid genuine use requirements, particularly around the five-year mark, could expose their intellectual property to serious challenges, ultimately undermining the security of their brand protection.

Lawyers should advise clients that refiling a trade mark to circumvent genuine use requirements, particularly around the five-year grace period, can be deemed bad faith by the General Court, jeopardizing the validity of the refiled mark. This ruling reinforces the need for genuine use strategies rather than procedural workarounds.

Source: Original reporting via legal industry analysis.