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Wednesday, 30 October 2013

The monopoly of "opoly": no Revelations in appeal from Galatians

Victor vanquished. Olesegun Victor Ibitoye v Hasbro Inc, Case O-382-13  is the second appeal from the UK's Trade Mark Registry to an Appointed Person to get a mention on this weblog today. While this appeal was made to Katfriend Daniel Alexander QC, in contrast with The Animals case, which was heard by Geoffrey Hobbs QC, the two cases share an unusual feature: in each of them the appellant's middle name is Victor.

In this case Ibitoye applied to register the word GALATOPOLY as a UK trade mark for games and related products.  Hasbro opposed, relying on its earlier registered MONOPOLY trade marks for games.According to Ibitoye, the GALATOPOLY mark was to be used for a proposed high-quality game that differed from Monopoly in that it was inspired by and based on the Bible -- in particular on the New Testament book of Galatians, and would be sold in specialist outlets such as Christian bookshops.

Hearing officer David Landau found that there was a very substantial reputation in the MONOPOLY mark for board games and related products. Having taken account of the fact that games and playthings would be bought by children as well as adults and purchased on impulse, so as to increase the impact of imperfect recollection, he held that Ibitoye's GALATOPOLY mark was likely to give rise to a risk of confusion under the Trade Marks Act 1994 s.5(2)(b). More than that, it was likely to dilute or be detrimental to the distinctive character of the MONOPOLY mark under s.5(3) of the same Act.

Ibitoye appealed. In his view David had wrongly evaluated the risk of confusion because of the differences that existed between the first element of the respective marks. In doing so, he pointed to the fact that marks with similar suffixes such as "COCA-COLA" and "PEPSI-COLA" existed without confusion. In any event, he said, the goods in question were not similar because the actual game Monopoly and the game he had devised were different. There was no chance of dilution of the MONOPOLY mark so as to cause damage, since Monopoly already had so very large a reputation and his proposed game would be of high quality.

Last month Daniel Alexander QC dismissed the appeal.

* Assessment of the likelihood of confusion required an abstract consideration of the respective registrations, rather than the actual games as sold, or proposed to be sold, and regardless of any similarity between them.

* There was no error in the hearing officer's assessment of the MONOPOLY mark's reputation; after all, it was self-evident that Monopoly was one of the best-known games in the world. The hearing officer was also right to find that the purchase of games by children, often on impulse, might increase the impact of imperfect recollection.

* The specification for the GALATOPOLY mark covered games in general, with nothing to suggest that its use would be limited to the sale of this game to particular outlets such as Christian bookshops.

* No analogy could be drawn with COCA-COLA and PEPSI-COLA. This was because "COLA" was a descriptive element.

* The hearing officer was perfectly entitled to conclude that the use of GALATOPOLY would be likely to have a detrimental effect on the distinctive character of the MONOPOLY mark in respect of the goods for which it was registered.

No great shocks and horrors here, says the IPKat: any game ending in "opoly" is likely to come to a sticky end, as did EUROPOLY and GLOBOPOLY on previous occasions.  If you're wondering about TOTOPOLY, that's owned by Waddingtons, which is owned by ... Hasbro.  CAT-OPOLY however appears to be something of an anomaly.

2 comments:

Leigh Martin said...

Readers may also remember the game GHETTOPOLY, conceived by David Chang, which also had a short period in the sun. I recall acting for a retailer in 2003 and receiving a complaint from Hasbro.. Interestingly it still has a listing on Amazon, and good as new versions fetch a handsome price - see http://www.amazon.co.uk/Ghettopoly/dp/B000VPMOJE. Leigh Martin, Partner, Clarion

Anonymous said...

You might want to look at poor old Gucci in this one:

http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results/t-challenge-decision-results-bl?BL_Number=O/423/13

Quite how bad the evidence must have been for Gucci's core brand not to have won.. Lord only knows!!

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