Winning Moves - MONOPOLY’s Monopoly on Opoly
This recent case from the appointed person in the United Kingdom centered on whether Hasbro, the owner of the MONOPOLY trade mark, was entitled to prevent the registration of an application for GALATOPOLY for games.
By way of a decision from the United Kingdom Intellectual Property Office (UKIPO) in January 2013, Hasbro had successfully opposed the registration of GALATOPOLY both on the basis that there existed a likelihood of confusion (under Section 5(2) of the Trade Marks Act) and also on the question of dilution (under Section 5(3)).
The applicant, who represented himself both before the UKIPO and for the appeal, criticized the hearing officer at first instance for wrongly evaluating the likelihood of confusion and dilution. He contended that GALATOPOLY would be used in relation to a high quality game, quite different to MONOPOLY, because it was based on the Holy Bible and in particular St. Paul’s Epistle to the Galatians. In addition, he alleged that the GALATOPOLY game would be sold at prices which would be sufficiently high to lead consumers to take care in selecting the game and would probably only be sold in specialist outlets relating to Christian teaching.
The applicant also drew the appointed person’s attention to the differences between the marks, perhaps its strongest point, although he claimed there would be no possibility of dilution or damage because Hasbro’s MONOPOLY brand already had a very large reputation.
In reaching his decision, the appointed person explained that the question of the actual games was irrelevant and that the Trade Marks Act required him to simply consider the notional and fair use of the marks across the scope of the specifications of goods. The appointed person also dwelt on the reputation of Hasbro’s MONOPOLY trade mark, as did the hearing officer at first instance and concluded that as one of the best known games in the world, it was self evident that the MONOPOLY brand had a sufficient reputation for games.
In relation to the question of whether confusion would arise, the appointed person concurred with the hearing officer that there could be a question of imperfect recollection in terms of the purchase on impulse of lower cost games, both by adults and children. The different intended outlets for the applicant’s games and the different types of games were not factors that could be taken into account, said the hearing officer, and this was not disputed by the appointed person.
Turning to the crux of the case, namely the comparison of the marks, the hearing officer had only found a “very low degree of similarity” between MONOPOLY and GALATOPOLY. However, the hearing officer had placed a good deal of weight on the fact that MONOPOLY, used for games, is a household name with the “very highest level of distinctiveness”. Accordingly, notwithstanding the differences between the prefix of both marks, it was concluded that this was a situation where the common element, -OPOLY, was “strikingly distinctive”. Accordingly, in conclusion, the appointed person felt there was no reason to disturb the hearing officer’s original decision, although, in his view, there was perhaps a greater level of similarity between the marks than the hearing officer had been willing to accept.
Considering the question of dilution, the appointed person accepted the applicant’s submission that caution should be taken before conferring an unduly wide monopoly in MONOPOLY. However, on the basis that the appeal was to consider whether the hearing officer had misdirected himself in law and was not simply a re-hearing, the appointed person was of the opinion that the hearing officer was entitled to conclude that use of GALATOPOLY would have a detrimental affect on the distinctive character of the MONOPOLY mark in respect of the goods for which it is registered.
Comment
For owners of well known brands such as MONOPOLY, cases such as this emphasize the importance of being able to evidence the fame and notoriety of one’s brand at first instance and to be able to point to relevant case law. Hasbro were able to refer to previous decisions where they had been successful in preventing the registration of marks such as EUROPOLY and GLOBOPOLY. From the applicant’s point of view, it is possible that professional representation may have assisted, especially in terms of the focus of the submissions and the points that were relevant. However, having failed at the first instance, it seems clear that there was no fundamental error perpetrated by the hearing officer and thus the chances of success on appeal were always going to be remote.