05 November 2013

Is Galatopoly too similar to Monopoly for use in connection with games? Would the customer be confused into thinking the games were necessarily related?

On appeal, the Appointed Person (O-382-13) has confirmed the decision of the Hearing Officer at the UK Intellectual Property Office that Galatopoly cannot be registered as a trade mark.

The application, covering games and playthings; playing cards, was opposed by Hasbro, Inc on the basis of its earlier trade mark rights in Monopoly, also covering games. Hasbro argued that there was a likelihood of consumer confusion between the later-filed mark and Monopoly and that registration of Galatopoly would dilute the distinctive character and reputation of Hasbro’s mark.

The opposition was successful but the applicant appealed. He argued that Galatopoly would be a high-quality, high-priced game based on the Bible and sold at specialist Christian stores. As such, the consumer would be exercising great care when making their purchase and would not be confused. In addition, the first parts of the respective marks were quite different and marks with different suffixes (for example Pepsi Cola and Coca Cola) coexist without confusion.

The first point, comparing the actual games was dismissed. UK trade mark law requires, for opposition purposes, that the assessment of similarity of goods must be for the goods claimed by the application, not how they are actually used. The relevant comparison therefore is games at large vs games at large.

On the second point, while it is true that first components of mark can be more important, this is not a rigid rule. Monopoly is a household name 'at the very highest level of distinctiveness owing to use'. Consequently there is a strikingly distinctive common element, '-opoly', between the respective signs which is “such that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark sense at all”. This would lead to indirect confusion – ie the consumer would not confuse Galatopoly with Monopoly, but would assume that Hasbro was behind both games.

The appeal was consequently dismissed.

This case provides a useful reminder of the correct principles to be applied when comparing marks and goods and services for opposition purposes. It is also a good illustration of the enhanced protection which may be enjoyed by trade marks which have an enhanced level of distinctiveness through long and widespread use.

The author Chris Morris is a Trade Mark attorney in Burges Salmon’s Trade Mark & Design team led by Jeremy Dickerson. Burges Salmon’s Intellectual Property team also includes IP specialist dispute lawyers and non-contentious lawyers.

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