May a company re-file the same trademark to circumvent the use requirement?

Anyone who gets a trademark registered is given five years to actually use that trademark. Some trademark owners try to avoid that obligation of use by re-registering the same mark just before the end of that period - a so-called repeat filing. Does this strategy indicate bad faith? The Court of Cassation now answers explicitly in a ruling of May 7, 2026: the mere fact that the applicant subsequently benefits from his repeat filing is not sufficient to prove bad faith. Those seeking to rebut the presumption of good faith must show that at the time of filing the applicant intended to evade the requirement of use.

The facts

Peloton Interactive Inc. has been operating as an interactive fitness company since 2012. Between 2019 and 2021, it had four new word marks PELOTON registered - three Union marks and one Benelux mark - for fitness equipment, sportswear, streaming services and physical exercise, among others. It also already had two older international PELOTON registrations with EU and Benelux designations since 2014 and 2017, respectively. However, it did not base its infringement claim on the latter two.

The Women Peloton bv (today E. Cycling Community bv) was founded in 2021 by, among others, a professional cyclist and his wife. The company focused on women on cycling, with online classes, a podcast, a book and related products.

After a notice of default and opposition proceedings at the EUIPO, Peloton sued The Women Peloton in April 2022 before the president of the Dutch-speaking business court in Brussels. The latter dismissed the claim in February 2023 for lack of likelihood of confusion.

On appeal, The Women Peloton brought a counterclaim for partial cancellation of the PELOTON trademarks on three grounds: bad faith filing as a repeat filing, common name and lack of distinctiveness for bicycle-related goods and services. The Brussels Court of Appeal, in a ruling dated May 21, 2024 (2023/AR/573) dismissed that counterclaim and established trademark infringement at the same time.

The Women Peloton filed a cassation provision against that ruling, raising three grounds. The most important - and the only one dealt with in detail here - concerned the assessment of bad faith at the repeat filing.

The decision

The Court of Cassation rejected the cassation provision.

The ruling departs from Art. 59(1)(b) Union trademark regulation and art. 2.2a(2) BTIP, which constitutes the transposition of Art. 4(2) Directive (EU) 2015/2436. A trademark may be declared invalid if the application was filed in bad faith. With reference to the Sky-ruling, the Court confirmed that bad faith is an autonomous concept of Union law to be interpreted uniformly under regulation and directive.

The Court then reiterated the settled case law of the Court of Justice. According to the Koton-ruling, there is bad faith when relevant and consistent evidence shows that the applicant filed his trademark not to participate fairly in competition, but with the intention of adversely affecting the interests of third parties or obtaining an exclusive right for purposes other than those covered by the functions of a trademark. The intent must, in accordance with Chocolatfabriken Lindt & Sprüngli, be assessed at the time of filing the trademark application. It is subjective and must be determined objectively, taking into account all relevant factual circumstances.

The burden of proof is on the applicant for a declaration of invalidity: the good faith of the applicant is presumed. If that presumption is rebutted by objective circumstances, the trademark owner must provide a plausible explanation of the objectives and commercial logic of his application.

Specifically for the repeat depotfiling, the Court recalls T-663/19 (Monopoly): no provision prohibits resubmission of an application for registration of the same mark, and such a submission in itself does not constitute evidence of bad faith. There may be commercial reasons for it, such as protecting a modernized version or expanding the goods and services description. However, it does follow from the same ruling that bad faith is present when the applicant intended to circumvent the rule of proof of genuine use after the five-year grace period by artificially creating a situation in which he does not have to provide such proof.

From that case law, the Court of Cassation apparently deduces that the presumption of good faith on the part of the applicant cannot be rebutted on the sole basis of a subsequent finding that the applicant actually derived an advantage from his repeat filing by avoiding proof of normal use in opposition proceedings. The presumption is rebutted only if, based on the totality of the objective circumstances, it is shown that, at the time of filing, the applicant intended to circumvent the use requirement rule.

To the extent that the cassation provision relied on the contention that the ex post facto advantage was sufficient, it fails as a matter of law. To the extent that it criticized the reasoning of the appellate judges, it rests on a misreading of the appeal ruling: the appellate judges had indeed explained why the objective circumstances in this case did not demonstrate bad faith, inter alia because the trademarks applied for were not filed at a time when the older trademarks were close to being due for use and the new filings were within a commercial logic of modernization and expansion.

Legal analysis and interpretation

A refinement of Monopoly, not a reversal

The General Court's ruling in T-663/19 was sometimes presented in the literature as an announcement of a stricter line against repeat filings: once the applicant subsequently benefited from the evidence dismissed in oppositions, bad faith would be established. The Court of Cassation corrects that reading. The benefit that a trademark owner subsequently derives from a repeat filing is not in itself an objective circumstance that rebuts the presumption of good faith. It may constitute only one element in an overall assessment apparently focused on intent at the time of filing.

This is logically consistent with the rule stated in Koton and Chocoladefabriken Lindt & Sprüngli that the applicant's subjective motive is assessed at the time of filing. The retrospective use of the mark in opposition proceedings strictly speaking says nothing about that intention years before - although it may illuminate them in conjunction with other elements.

The burden of proof remains heavy

The ruling confirms that it is the applicant for revocation who must break the presumption of good faith, and to do so he must present an interrelated body of objective evidence. In practice, this amounts to a documented reconstruction of the chronology between the older and newer filings, the commercial context at the time of filing, any threatened claims of revocation for non-use, and the goods and services description of both filings. Without those elements, the applicant for invalidation catches a bone, even if the applicant has been able to effectively evade proof of use in subsequent oppositions.

A sobering message for those considering a nullity claim

For the practicing lawyer considering challenging the repeated filing of an older, common or little-used mark, the ruling is sobering. The Court of Cassation makes it clear that merely gathering hindsight evidence - including about the use the trademark holder made of the repeat filing in opposition proceedings - is insufficient. The applicant for invalidation will have to show that, at the time of filing, the repeat filing had no plausible commercial logic and could only be explained by a desire to circumvent the use rule.

Specifically, what does this mean?

For trademark owners who actively manage their portfolios. Strategic re-filing of existing trademarks remains permitted, provided it fits within a demonstrable commercial logic. Modernizing the visual identity, extending the goods and services description to new activities or distribution channels, or protecting new product lines are accepted justifications. Document that logic internally at the time of filing: an internal note on the product roadmap, a marketing plan substantiating the expansion of offerings, or a visual design note describing the modernization are all elements that can come in handy years later to fend off a bad faith attack.

For companies seeking to challenge a trademark dispute through a nullity action. A claim for invalidation for bad faith is not a secondary argument raised for want of better. The ruling confirms that such claims require a thorough record that reconstructs the applicant's intent at the time of filing. A meticulous analysis of the chronology between the older and new filings, of any threat of invalidation for nonuse, and of the difference in commodity and service descriptions will often be decisive.

For those planning a long-term brand strategy. The ruling confirms that the Belgian legal system in terms of trademark law is fully in line with the case law of the Court of Justice and the General Court of the European Union. The obligation of use after five years remains an essential part of the system, but those who can present commercial reasons for a new registration need not see the use rule as an inescapable obstacle. Modernization and strategic expansion remain legitimate motives.

Frequently asked questions (FAQ)

What is a repeat filing in trademark law?
A repeat filing is the registration of a new mark that is wholly or substantially identical to a previously registered mark of the same owner, often shortly before the expiration of the five-year grace period during which the earlier mark becomes subject to use. Such a registration is not in itself prohibited and does not in itself prove bad faith.

Who must prove that a trademark was filed in bad faith?
The burden of proof is on the party seeking the annulment. The good faith of the applicant is presumed until proven otherwise. Only when the applicant for a declaration of invalidity demonstrates objective circumstances indicating an unfair intent does it shift to the trademark owner to provide a plausible explanation for the application.

Can a trademark owner continue to file the same mark indefinitely to circumvent the duty to use?
Not without risk. When a repeat filing is apparently aimed solely at circumventing the rule of proof of genuine use, the application is in bad faith and the trademark may be declared invalid. The Court of Cassation clarifies that this intent must be determined at the time of filing, based on objective circumstances - not solely on what the trademark owner does with the repeat filing after the fact.

Conclusion

The Court of Cassation confirms that Belgian trademark law is fully aligned with the Union law approach to bad faith in the case of a repeat filing. The stakes are high: a trademark owner who strategically re-files enjoys a presumption of good faith that can only be broken on the basis of objective circumstances showing intent to evade the duty of use at the time of filing. Mere hindsight benefit is not sufficient. That shifts the focus of the debate to the chronology, the description of goods and services, and the commercial context of the filing - elements that both trademark owners and invalidity applicants must scrupulously document.