As regular readers of the Snippets section of MakeYour Mark will recall, Hasbro recently successfully opposed Olesegun Victor Ibitoye’s UK trademark application for Galatopoly (stylised) in respect of “games and playthings; playing cards” in Class 28 on the basis of their earlier Class 28 registrations for MONOPOLY.
The Decision at First Instance
The Hearing Officer concluded that, whilst there was “a very low degree of similarity” between the marks and direct confusion was unlikely, there was a risk of indirect confusion.
The common suffix in both marks (-opoly) was so distinctive that the average consumer would believe that the Galatopoly game came from Hasbro. Further, Monopoly was “probably the best known trade mark in the United Kingdom for a board game” and the use of Galatopoly would be detrimental to the distinctive character of Monopoly (See MakeYour Mark, Autumn 2013, “Snippets” section at pages 15/16 for a more detailed analysis of this decision).
MrIbitoye, representing himself, subsequently appealed the decision to the Appointed Person on the basis that the Hearing Officer wrongly evaluated the likelihood of confusion (under Section 5(2)) and the likelihood of dilution (under Section 5(3)), (Appeal to the Appointed Person – Decision O-382-13).
Somewhat predictably, MrIbitoye’s appeal was rejected.
Daniel Alexander QC, sitting as the Appointed Person, agreed with the Hearing Officer that the marks were similar although he felt that “there was, perhaps, somewhat greater similarity [between the marks] than he [the Hearing Officer] was prepared to accept, which is reflected in findings in some of the decisions on similar issues from other trade mark offices”.
Interestingly, the Appointed Person took notice of the decisions made by other national offices and OHIM where Hasbro had successfully prevented the registration of –opoly suffixed marks. It seemed to reassure him that the Hearing Officer’s decision was correct.
MrIbitoye’s arguments that the goods were different were also dismissed because the specification of both parties’ marks covered games in general. MrIbitoye’s proposed use of Galatopoly for a high quality game based on the Bible which was to be sold through retail outlets specialising in Christian teachings was irrelevant. Not surprisingly, MrIbitoye’s offer to disclaim rights in “opoly” was also dismissed.
Whilst the refusal of the application is the right result, Hasbro were perhaps fortunate to succeed under both Sections 5(2) and 5(3) given the marked difference between the prefixes of both marks and Hasbro’s lack of use of different –opoly marks.
Apart from the overall weakness of his arguments, MrIbitoye arguably played into Hasbro’s hands by representing himself in a case for which Hasbro will have had deep pockets. He may be well-advised to appoint a trade mark attorney to advise on the replacement mark.