VINOPOLY held to be confusingly similar to MONOPOLY
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In Hasbro Inc v Lenip Business Management SLU (Case 1 206 044, October 20 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that the trademark VINOPOLY was confusingly similar to the earlier mark MONOPOLY.
Lenip Business Management SLU (Spain) sought to register the word mark VINOPOLY as a Community trademark (CTM) in respect of goods in Classes 9 (including "games programs") and 28 ("games and playthings") of the Nice Classification. US Company Hasbro Inc opposed the application on the basis of its CTM MONOPOLY for goods in Classes 9 and 28. Hasbro argued that:
- the marks were similar and covered identical goods; and
- the registration of the VINOPOLY mark would be detrimental to the distinctiveness and reputation of the MONOPOLY mark.
The Opposition Division first found that the marks had a medium degree of visual similarity. In particular, it held that the marks coincided in six letters out of eight - namely, the sequence 'nopoly'. From an aural point of view, the Opposition Division found that the marks had the same rhythm and intonation, despite the fact that the first syllable was different.
From a conceptual point of view, the Opposition Division pointed out that the VINOPOLY mark had no meaning, while the early mark meant “the exclusive possession or control of the trade in a commodity, product or service; the condition of having no competitor in one’s trade or business”.
Turning to the overall assessment of the marks, the Opposition Division stated that the differences between the marks were insufficient to counteract the visual and aural similarities between them. The Opposition Division noted Lenip's argument that the common element 'poly' is frequently used in combination with other elements in the field of games, but pointed out that, in most cases, 'poly' is placed at the beginning of the marks, and not at the end. Due to the similarity of the marks and the identity of the goods, the Opposition Division concluded that the opposition had been successful, regardless of any enhanced distinctiveness of the earlier mark.
Arguably, OHIM erred in its assessment of the conceptual impact of the word 'monopoly'. The clear and immediate meaning attached to it should have been given more weight in the comparison of the marks. Under EU case law, the conceptual comparison should be given prevalence, and one cannot see why OHIM did not apply this rule in the present case.
Moreover, OHIM should have taken into consideration the inherent and enhanced distinctiveness of the MONOPOLY mark. One may argue that the public is more likely to differentiate VINOPOLY from MONOPOLY due to the distinctiveness of the earlier mark.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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