Owner of MONOPOLY successfully opposes 'opoly' mark

In Ibitoye v Hasbro Inc (Case O-382-13), the appointed person has dismissed an appeal against a decision of the hearing officer in which the latter had upheld an apposition against the registration of the trademark GALATOPOLY.

Olesegun Victor Ibitoye applied to register the UK word mark GALATOPOLY for games and related products. Hasbro Inc opposed, relying on its earlier registered MONOPOLY trademarks 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 Trademarks Act 1994, Section 5(2)(b). In addition, it was likely to dilute, or be detrimental to, the distinctive character of the MONOPOLY mark under Section 5(3) of the act.

Ibitoye appealed. In his view, the hearing officer 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.

On September 13 2013 Daniel Alexander QC dismissed the appeal on the following grounds:

• 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; 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.

The case shows that any game ending in ‘opoly’ is likely to come to a sticky end, as did EUROPOLY and GLOBOPOLY on previous occasions.

Jeremy Phillips, IP consultant to Olswang LLP, London