Monopoly in an -onopoly, at least for games

The owner of the filed trade mark GALATOPOLYÂ appealed the decision of Mr David Landau on behalf of the Comptroller who upheld the opposition to the registration of the mark for games and certain related products on the basis of earlier registered trade marks for MONOPOLY.

The appeal, was based on whether the word GALATOPOLY should be registered for games in the light of the prior registration and reputation in MONOPOLY for games.

His game is a game which (a) would be of high quality (b) would be quite different to MONOPOLY, since it is inspired by and based on the Holy Bible (in particular the ninth book of the New Testament, St Paul’s Epistle to the Galatians) (c) would be sold at such prices as would be likely to lead the average consumer to take considerable care in selecting the game and (d) would be sold in specialist outlets specializing in Christian teaching.

The appeal was dismissed. The reasons reputation and confusion. “In short, it is, in my judgment, self-evident that MONOPOLY is one of the best-known games marks in the world” and that confusion wwas established on the grounds that “playthings and playing cards would be bought by the public at large including children as well as adults and might be low cost, purchased on impulse (paragraphs 35-35 of the decision). He said that, because of this, the impact of imperfect recollection might be increased………………..[ they would be] brought from displays in stores, from mail order catalogues and via the internet and, as a result would be purchased primarily by eye and that visual similarity would have a greater impact than aural. I am unable to accept the point made by the applicant that the average consumer would be particularly observant because of the price of the games in question. Even if the applicant’s actual game was expensive, games in general may not be.”

Interestingly while this result was in line with a number of other decisions of national trade mark offices and OHIM relating to marks with an –OPOLY suffix in respect of games and similar articles or services for example: Hasbro, Inc. v. Flick, Decision of the First Board of Appeal of OHIM of 3 December 2004, R288/2003-1 and Hasbro, Inc. v. Lasher, Decision No 1565/2005. Both Australia and US may offer a different position and in particular the well-known “Anti-Monopoly” litigation (see e.g. Anti-Monopoly Inc. v. General Mills Fun Group, 611 F.2d 296.

Michael Coyle

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