Latvian Board of Appeal rules on total invalidation of Grigorius Holdings trademark “ROCKEFELLER” based on bad faith
On 2 November, 2020 the Board of Appeal of Industrial Property examined the opposition filed in the name of the USA companies The Rockefeller University un 1979 Family Trust Licensor, LLC against the Latvian trademark registration “ROCKEFELLER” No. M 74 065. The opposition was filed against all goods in class 9 and services in classes 35, 38, 41. The owner of the contested mark is Grigorius Holdings, SIA, which is related to the famous trademark pirate Michael Gleissner.
The trademark attorney Gunta Zariņa represented the opponents The Rockefeller University and 1979 Family Trust Licensor, LLC.
1979 Family Trust Lincesor, LLC is a foundation established by the direct descendants of American businessman and philanthropist John D. Rockefeller (1839-1937) to protect the family name and control the use of the ROCKEFELLER mark. The Rockefeller University is historically closely associated with John D. Rockefeller, who founded the Rockefeller Institute in 1901 which now operates as Rockefeller University.
Based on all arguments and evidence presented in the case, the Board of Appeal recognised bad faith of the applicant at the time of filing the contested mark. Additionally, the Board of Appeal concluded the following:
- The life stories of rich people are a topic of great public interest. It is a well-known fact that John D. Rockefeller in the 19th century and at the end of the 20th century ran a very successful oil business, which allowed him to acquire not only one of the largest private equities in the world, but also to become the first billionaire in the world.
- Nowadays the legacy of John D. Rockefeller’s descendants is still estimated at about $150 billion. Today the Rockefeller family is still considered one of the richest families in the United States with great contributions in American industrial, financial, and political industries.
- There is no doubt that unrelated persons to John D. Rockefeller could also have the same surname, but this surname is widely popular and very famous in business industries particularly because of John D. Rockefeller.
- The owner of the contested mark should have been aware not only of the registration of an identical earlier mark, but also of the fact that the mark reproduces the surname of the world’s richest man Rockefeller and the Rockefeller dynasty as a whole.
- The choice of filing such mark is not accidental and is a deliberate act for which there is no reasonable justification.
- The behaviour of the owner of the contested mark is incompatible with the principles of fair commercial and business conduct. which are also laid down in the case law of the European Union.
The applicant’s relation with the trademark pirate Michael Gleissner and his dishonest intentions have also been reported in a number of intellectual property media publications, trademark disputes in other jurisdictions, thus signifying bad reputation.