German businessman Michael Gleissner is a controversial figure in the world of trademarks. Over the past few years, Gleissner has made a name for himself across the globe by filing thousands of trademark applications through hundreds of companies of which he is the sole director. So prolific is his filing activity that, by the end of 2017, over 5% of all trademark disputes before the UK IPO involved a legal entity owned by Gleissner. Despite all this activity, Gleissner’s motivation remains unclear. His Wikipedia page lists his activities as “entrepreneur, film producer, director, screenwriter, and actor”, alongside a sizeable filmography.
Whatever Gleissner’s intentions, his attempt to register two marks long associated with a successful videogame franchise has met with resounding defeat at the hands of the UKIPO, courtesy of Japanese videogame developer and publisher Square Enix.
On 9 March, in consolidated invalidation proceedings between Gleissner entity Fashion One (Europe) N.V. and Square Enix Co. Ltd, Square Enix successfully sought invalidation of two applications filed by Fashion One in 2017 for the terms “Parasite Eve” and “parasite”. As gaming fans will know, “Parasite Eve” is a survival horror game franchise that began with the publication of Square’s PlayStation game of the same name back in 1998. The franchise continued into the 2010s. Following Fashion One’s application to register the two marks, Square Enix sought invalidation on the grounds that, though unregistered, “Parasite Eve” has been used in the UK in respect of video game software since 1998, and that Fashion One’s use of the contested marks would be “a misrepresentation to the public and result in damage to its goodwill”.
Additionally, Square Enix singled-out Fashion One’s proprietor, alleging that “Mr Gleissner owns a large number of companies through which he has acquired a wide portfolio of trademarks and has been involved in other legal proceedings concerning opposition and cancellation of third party trademarks, where it has been found that his actions were an abuse of process and/or that he was acting in bad faith”.
Finding in Square Enix’s favor, the UKIPO’s hearing officer, Mrs T Perks, held that “the applications were filed in bad faith”, and that Fashion One was guilty of passing off, stating:
“[W]hen the proprietor applied for the contested marks, it was seeking to gain a commercial benefit from blocking the use of identical or similar signs by the applicant. This … equates to an intent on the proprietor’s part to seek the benefit of the applicant’s goodwill. The proprietor did not deny that there was such an intent. I recognize that in a typical passing-off case, an intent on the part of defendant to pass itself off as the claimant implies an intent to use the mark in the marketplace. However, I consider that it makes no difference that the proprietor had no intention to use the marks for the purpose of establishing passing-off in a case like this, if what the proprietor was seeking to obtain was, still, a commercial benefit from blocking the use of identical or similar signs by the applicant, when the signs are those to which the applicant’s goodwill is associated. Consequently, my finding is that misrepresentation was intended by the proprietor and I infer that there is misrepresentation and damage.”
The UKIPO ruled that the applications were “deemed never to have been made” and awarded costs to Square Enix.
It seems highly unlikely, however, that the UKIPO will have seen the last of the prolific Mr Gleissner.
