DRINKOPOLY | Decision 1918641
Date Published: May 1, 2018
OPPOSITION No B 1 918 641
Hasbro, Inc., 1027 Newport Avenue, Pawtucket, Rhode Island 02862, United States of America (opponent), represented by Gill Jennings & Every Llp, The Broadgate Tower 20 Primrose Street, London EC2A 2ES, United Kingdom (professional representative)
a g a i n s t
Kreativni Dogadaji d.o.o., Krapinska 27, Zagreb, 10000, Croacia (holder), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).
On 11/01/2017, the Opposition Division takes the following
1. Opposition No B 1 918 641 is upheld for all the contested goods.
2. International registration No 1 062 463 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 062 463, namely against all the goods in Class 28. The opposition is based on, inter alia, United Kingdom trade mark registration No 711 981. The opponent invoked Article 8(1)(b), Article 8(5) and Article 8(4) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The holder requested that the opponent submit proof of use of United Kingdom trade marks No 711 981 and No 1 047 116.
For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the proof of use in relation to the earlier United Kingdom trade mark registration No 711 981.
The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date.
The relevant date is 21/07/2011). The opponent was therefore required to prove that the trade mark on which the opposition is based were put to genuine use in the United Kingdom from 21/07/2006 to 20/07/2011 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 28: Board games.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 04/09/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/11/2014 to submit evidence of use of the earlier trade mark. This time limit was extended until 04/01/2015. On 05/01/2015, within the time limit since the last day was Sunday, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is, in particular, the following:
- Exhibit 1 – A copy of the front page of an Argos catalogue showing a date of Autumn/Winter 2009 and the website www.argos.co.uk, together with a copy of the page featuring board games showing the mark .The prices are in English pounds.
- Exhibit 2 – A copy of the front page of an Argos catalogue showing a date of Spring/Summer 2010 and the website www.argos.co.uk, together with a copy of the page featuring board games under the mark. The prises are in English Pounds.
- Exhibit 3 - an article from The Guardian dated 28 December 2010 titled ‘HOW HAVE MONOPOLY’S LONDON STREETS CHANGED IN THE GAME’S 75 YEARS?’. The article features discussion of the MONOPOLY board game.
- Exhibit 4 – A history of MONOPOLY taken from the opponent’s website. Describing ongoing use of MONOPOLY and that the mark has been in continuous use from 1935 until 2010.
- Exhibit 5 – A front cover of a box showing an anniversary edition of a board game under the mark . The cover of the box shows the years 1960 and 2000 on it. In the top right hand corner of the box is a price label indicating that the game costs £39.99.
- Exhibit 6 – A photograph of a special edition of the board game under the mark to commemorate the 2006 Fifa Word Cup.
- Exhibit 7 – Document dated 2013 of unknown origin with details of sales and advertising figures for MONOPOLY board games in the UK during the period 2004-2013.
In addition, on 02/04/2014, to substantiate its claim of reputation as regards board games covered by the earlier marks on which the opposition is based, the opponent submitted, inter alia, the following evidence, which will also be taken into account as proof of use:
- Exhibit 4 –Packages from 2008 showing the mark for board games.
- Exhibit 6 – Extracts from the opponent’s UK Buyers’ Guides for the years 2006 to 2010 illustrating a range of game boards under the mark MONOPOLY offered by the opponent in the UK.
- Exhibit 7 – Pages from catalogues of the UK retail outlet Argos for the years 2009 and 2010 including board games showing the mark with prices in English Pounds. Catalogues also contain a list of more than 500 retail stores Argos.
- Exhibit 8 – Extract dated 29/07/2010 from the website www.marketingweek.co.uk showing the Top 50 Brand Finance British Brands showing the brand ‘Argos’ as one of the most popular retail outlets in the United Kingdom.
- Photographs of a selection of board games, a brochure illustrating these games, the instruction book for the Birmingham edition and the box details for the Glasgow edition of a board game under the mark ‘MONOPOLY’.
- Exhibit 10 – Extracts undated from the website shop.wining.moves.co.uk showing the board games under the mark ‘MONOPOLY’ offered for purchase. According to the opponent the extracts correspond to years 2007 and 2010.
The holder argues that the items of evidence do not indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The holder’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
The catalogues, websites and packages show that the place of use is ‘the United Kingdom’. This can be inferred from the language of the documents (English), the currency mentioned (English Pounds) and the websites top level domain name, the United Kingdom. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The applicant argues that the documents submitted following the raising of the caveat of non-use in the course of the proceedings are not apt to demonstrate use of the trademark as registered.
The Court has found that, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, while not providing direct information on turnover, can also be sufficient for proving extent of use in an overall assessment (08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). It is therefore necessary to examine the specific circumstances of each case to see if the evidence provided is sufficient.
Assessing the circumstances of the case may include giving consideration, inter alia, to the nature of the goods or services, the characteristics of the market concerned and the scale and frequency of use of the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39).
The documents filed, namely the Argos catalogues from 2009 and 2010, the list of retail stores Argos in the United Kingdom, the extracts from the websites www.marketingweek.co.uk and shop.wining.moves.co.uk, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
In the present case, and despite the lack of invoices and that the information about the commercial volume of use comes from the opponent, the Argos catalogues show retailing of game boards under the mark ‘MONOPOLY’ and the number of 500 stores included in the list of Argos Retail stores covering many towns and regions along the United Kingdom show that the products were sold covering a large territorial scope. Moreover, the extract from the website www.marketingweek.co.uk presenting the popularity of Argos retail stores among the public and the extract from the website shop.wining.moves.co.uk showing board games under the mark ‘MONOPOLY’ offered for purchase give information about the constancy of the use.
It should be also bear in mind that use of the mark need not be quantitatively significant for it to be deemed genuine.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the registered United Kingdom trade mark No 711 981 consist of the wordmark ‘MONOPOLY’. It has been used in the extracts of websites as a word mark ‘MONOPOLY’ and in catalogues and packages as the figurative marks , and .
The above mentioned figurative marks can also be accepted as being use of the mark according to Article 15(2)(a) EUTMR, since the slight stylisation of the typeface and different colours are only small variations that do not alter the distinctive character. Regarding the depiction of the mark with a figurative element representing a man with moustache and hat, the word element ‘MONOPOLY’ is considered the most dominant element, due to its size in the mark, and therefore, that figurative element plays a secondary role in the sign.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR, for all the goods for which the mark is registered.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
REPUTATION – ARTICLE 8(5) EUTMR
For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier United Kingdom trade mark No 711 981, for which the opponent claimed repute in the United Kingdom.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the holder establishes due cause for the use of the contested trade mark.
In the present case, the holder did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- The signs
Earlier trade mark
The relevant territory is the United Kingdom.
Visually, the signs are similar to the extent that they coincide in the letters ‘N*OPOLY’. However, they differ in the first letters ‘MO’ in the earlier mark and the letters ‘DRI*K’ of the contested sign. Moreover, the signs differ in the typeface, the colours and the figurative elements consisting of the silhouettes of two people above the letters ‘POLY’ in the contested sign.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛N*OPOLY’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the syllable ‘MO’ in the earlier mark and in the sound of the letters ‘DRI*K’ in the contested sign.
Conceptually, the public in the relevant territory will perceive the earlier sign as ‘exclusive control, possession, or use of something’ (information extracted from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/monopoly). The verbal element in the contested sign as a whole does not have any meaning for the people in the relevant territory. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57), Therefore, it is reasonable to assume that the element ‘DRINK’ at the beginning of the contested sign might be associated by the relevant public with the process of swallowing (a liquid); imbibing or consuming alcohol, especially to excess (information extracted from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/drink).The figurative element in the contested sign representing one feminine silhouette with a glass inclined above a masculine silhouette laid down will be perceived as a drunk couple. Since the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar to some extent.
- Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation the United Kingdom.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the EU was designated in the contested international registration on 14/09/2010. However, the contested trade mark has a priority date of 12/05/2010. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely
Class 28: Board games.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 02/04/2014 the opponent submitted the following evidence.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:
- An affidavit of 05/05/2011, signed by the Director of Global IP and Enforcement for the Opponent, Hasbro, Inc., in which he provides information about the history of the board game MONOPOLY and explains the context of the submitted evidence.
The Director of Global IP and Enforcement affirms, inter alia, that in the UK the Hasbro’s direct sales of MONOPOLY games for the period from 1995 to 2009 were between approximately GBP 4.2 million to GBP 16 million per year. By unit volume, UK sales were between approximately 614 000 to 947 000 from 1996 to 2009.
- Various documents regarding the use of the mark MONOPOLY in the UK (e.g. a copy of the standard box of the game, printouts from various websites showing examples of the opponent’s range of products including the standard version and specific versions such as Junior and Travel versions, electronic or on-line versions, versions based upon particular films, sporting events and TV series (e.g. Star Wars, FIFA World Cup, Simpsons or Disney versions) and games pertaining to local towns and regions in the UK, all bearing the mark MONOPOLY; pages from the catalogue of Argos, one of the UK’s most popular retail outlets for the years 1998, 2003, 2005 and 2009 depicting different versions of the MONOPOLY games).
- Evidence concerning promotion and advertising activities, covering also the years before filing the contested application, such as printouts from the opponent’s website providing information and news on the various editions of the MONOPOLY games, documents relating to the world MONOPOLY championship, licensing activities for promotional purposes etc.
- Extracts from the website amazon.co.uk showing under the mark ‘MONOPOLY’ as video games editions from 2001 to 2010 for purchase.
- Press clips from UK newspapers as Daily Mail, The Guardian and the Sun dated 07/09/2009 the first of them and undated the remaining, covering the launching of an online MONOPOLY game using Google’s Google Earth website. Extract of the website http://news.bbc.co.uk from 09/09/2009 covering the same news.
- Extracts from UK online gaming websites in which ‘MONOPOLY’ trade mark has been licensed before 2010.
- Documents showing the awareness of the mark MONOPOLY on the market such as articles published in the UK press (BBC News dated in 2006 and 2008, The Times dated in 2007 and 2008, The Guardian dated in 2010, The Sunday Times dated in 2007), fan sites existing on UK Internet websites, extracts from three English language dictionaries (Webster’s Third New International Dictionary, Collins English Dictionary and the Cassell Concise Dictionary) and market surveys: 2007 European Toys and Games Brand Penetration Study, carried out by Praxis Research Partners, revealing that the game MONOPOLY was known in the UK (prompted brand awareness 86%); an extract from a 2008 survey carried out in the UK and Germany by the Nunwood market research firm and showing prompted awareness level at 97% in the UK; an extract from a survey carried out in 2009 by Lieberman Research Worldwide, showing i.a. the awareness of the mark MONOPOLY for board games as 92% in the UK.
- Extract from UK websites such as amazon.co.uk and ebay.co.uk showing Reebok sport shoes with the mark ‘MONOPOLY’. The footwear collection launched in August 2008 took inspiration from the game pieces MONOPOLY according to a press clip from CNN News dated November 2008.
- Extracts from UK website amzon.co.uk showing card games using the mark ‘MONOPOLY’ for purchase dated between 2004 and 2010.
- Previous decisions of the Office wherein it was stated that the trade mark MONOPOLY enjoys a high degree of distinctiveness/reputation within the EU/UK for (board) games (R 288/2003-1, 680/2005, 1565/2005).
On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the United Kingdom for all the goods for which the opponent has claimed reputation.
It is clear from the evidence that the earlier trade mark MONOPOLY has been subject to a long standing and intensive use for board games in the United Kingdom. Furthermore, it has been demonstrated by the market surveys that the earlier mark is generally known in this country, where it enjoys a consolidated position among the leading brands. The sales figures, marketing efforts and a high degree of recognition among the relevant public shown by the evidence as well as the various references in the press to its success and also, for example, the existing fan sites are all circumstances that show that the United Kingdom trade mark MONOPOLY No 711 981 enjoys a reputation on the market in respect of board games in the United Kingdom.
- The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):
∙ the degree of similarity between the signs;
∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;
∙ the strength of the earlier mark’s reputation;
∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
∙ the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.
The establishment of a link between the signs, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.
In the present case, the conflicting signs are visually and aurally similar insofar they have in common the letters ‘N*OPOLY’. The signs differ in the additional letters ‘MO’ in the earlier mark and in the letters ‘DRI*K’, in the colours, in the stylisation and in the figurative elements of the contested sign. Despite the fact that the signs are not conceptually similar, the common ending makes the signs similar to some extent.
Indeed, the signs have the same structure consisting of an element (MON in the earlier mark and DRINK in the contested sign) followed by the same sequence of letters ‘OPOLY’ placed at their end. The typeface and colours of the contested sign will not have such a significant impact on consumers that their attention be detracted from the element ‘DRINKOPOLY’. Moreover, the figurative element consisting of two people who are drinking in the contested sign will reinforce the meaning of the element ‘DRINK’.
As been concluded above, the earlier mark has a reputation for board games in Class 28, and the contested goods are the following:
Class 28: Games and toys, except infant toys and rattles and children's toy bicycles and doll's feeding bottles, doll's beds, doll's houses, doll's clothes, toys for domestic pets.
An association between the marks is more likely where there is a special connection between the goods covered by the conflicting signs.
The contested games include, as broader categories the opponent’s board games. Therefore, these goods are considered identical.
The contested toys, except infant toys and rattles and children's toy bicycles and doll's feeding bottles, doll's beds, doll's houses, doll's clothes, toys for domestic pets belong to the same market of articles used for playing and amusing as the opponent’s board games. They are usually found in the same retail outlets. Moreover, many manufacturers will produce these kinds of articles.
The earlier mark is inherently distinctive for the goods in question, in particular because, in the relevant territory ‘MONOPOLY’ is a word without any relation to the relevant goods. As seen above, the earlier mark is reputed mark in the United Kingdom. The relevant public will recognise the ending of the earlier mark ‘OPOLY’ because of the proven reputation of the sign ‘MONOPOLY and it is likely that the consumer´s choice for identical or very similar goods could be influenced by the reputation of the earlier mark.
Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).
- Risk of injury
Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:
∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;
∙ it is detrimental to the repute of the earlier mark;
∙ it is detrimental to the distinctive character of the earlier mark.
Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).
It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.
The opponent claims the following:
- The highly distinctive character of the opponent’s marks renders them recognizable in any context, but especially in the context of identical or highly similar complementary goods. The evidence shows beyond peradventure that the applicant has chosen a mark highly similar to the opponent’s mark and that it is to be used for goods that compete directly with the principal products of interest to the opponent. The applicant’s mark must thereby inevitably misappropriate the attractiveness and advertising value of the opponent’s marks.
- The opponent’s investment in the ‘MONOPOLY’ mark is huge and encompasses the development of a wide range of board and other games as well as other licensed uses.
- The benefit drawn by the applicant is clearly that it intends to secure for itself, without investment in its own development of a mark over decades, the attractive force or the opponent’s marks. That attraction would not be based on the applicant’s merits but solely on the reputation and high distinctive character of the earlier signs in the relevant territory. The applicant would benefit from the goodwill enjoyed by the opponent as a result of the use and promotion of its earlier marks.
Detriment to distinctive character
- The evidence shows that third parties have made regular attempts to offer products, particularly games with marks with the suffix ‘OPOLY’ that the opponent has combated to protect the unique distinctive character of its marks.
- If the applicant is permitted to continue, other traders will similarly seek to sell products or register trade marks using the ‘OPOLY’ suffix which will undermine the distinctive character of the opponent’s marks. That will be detrimental also to the public, who will be less able to trust the origin of the products bearing such similar marks. Furthermore, the opponent’s ability to attract licensing or other development opportunities will inevitably be harmed and diminished if the mark is thought to be less distinctive.
Detriment to repute
- The opponent’s products are high quality goods and its marks symbolize that reputation accordingly. In the event that the applicant’s products failed to meet that level of quality to any degree, then given the high degree of similarity between the marks that would be bound to have an adverse impact on the opponent’s mark.
- The applicant’s mark is used in relation to a game with alcohol drinking content where the player is encouraged to drink large quantities of alcohol and is likely to become drunk. This is further reinforced by the imagery in the trade mark application itself where two people in drinking attitude are depicted. The applicant’s games could fall into the hands of minors and the aspects of game play would be considered inappropriate for them, and encourage to drink alcohol although they are under the legal age limit, then given the similarity of marks any resulting adverse reaction, private or public would inevitably be associated with and be detrimental to the opponent’s mark and reputation.
- The opponent and its predecessors have invested years of effort and enormous resources in establishing MONOPOLY/OPOLY as marks symbolizing a wholesome family game throughout the world. The association with alcohol and indeed with irresponsible consumption of alcohol can only be detrimental to the repute of the opponent’s mark and brand.
In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.
Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:
Class 28: Games and toys, except infant toys and rattles and children's toy bicycles and doll's feeding bottles, doll's beds, doll's houses, doll's clothes, toys for domestic pets.
As seen above, the earlier trade mark was found to have a reputation for:
Class 28: Board games
Detriment to repute (tarnishing)
Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 40, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 39).
The opponent argues that the holder´s goods may be of inferior quality. Such an argument is not valid as a means of demonstrating detriment.
There is no room in the present proceedings for an appraisal and comparison of the quality of goods currently marketed or that may be marketed in the future by each party under the signs in question.
Firstly, such an exercise, apart from being highly subjective, would not be feasible where the goods are not identical or where the contested trade mark has not yet been put to use.
Secondly, and more importantly, it would be erroneous to assess Article 8(5) EUTMR on the basis of the quality of the goods offered under the subsequent trade mark. Otherwise, the holder could claim as a valid defence that its goods are of equal, or even superior, quality to the opponent’s, where it is clear from the wording of Article 8(5) EUTMR that it is mere use of the contested trade mark which must be detrimental to the repute of the earlier trade mark.
Therefore, in assessing whether use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Opposition Division can only consider the goods as indicated in the list for each trade mark. The harmful effects of use of the contested sign for the goods applied for must derive from the nature and usual characteristics of the relevant goods in general.
Moreover, under Article 8(5) EUTMR, the proprietor of a reputed trade mark is protected against the use of a similar trade mark for goods and services of a comparable nature but obviously inferior quality. The erosion of the high esteem and reputation enjoyed by the earlier trade mark among the relevant public in such a case would mean that the public would associate the goods and services of inferior quality covered by the subsequent trade mark with the earlier trade mark, thus inferring a connection as regards commercial origin. Without such a connection, the inferior quality of the subsequent goods and services would not harm the high esteem enjoyed by the earlier trade mark among its clientele. Therefore, without such a connection, detriment to the repute of the earlier trade mark is not likely to occur. If, however, such a connection were to exist, it would inevitably mean that use of the contested trade mark would take advantage of the reputation of the earlier trade mark. Such advantage would necessarily be unfair because it is for the proprietor of the trade mark with a reputation to exploit and benefit from such reputation. As a matter of principle, unauthorised parties may not exploit an earlier trade mark’s reputation, regardless of whether or not the goods and services marketed under the subsequent mark are of inferior quality. In such a case, Article 8(5) EUTMR would apply, not because the inferior quality of the contested goods and services would be detrimental to the reputation of the earlier trade mark, but because unfair advantage would be taken of the distinctive character or repute of the earlier trade mark.
This argument must, therefore, be set aside.
The opponent also puts forward that the association with alcohol and indeed with irresponsible consumption of alcohol can only be detrimental to the repute of the opponent’s mark and brand.
According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 35). In this case, the average consumers are the public at large.
Tarnishment occurs where there is an association between the earlier reputed mark, either at the level of the signs or at the level of the goods or services, which is injurious to the earlier trade mark’s repute. In other words, this type of detriment takes place where the use of the contested mark would prompt inappropriate or negative mental associations with the earlier mark, or associations conflicting with the image the latter has acquired in the market (23/11/2010, R 240/2004-2, WATERFORD, § 89).
In the present case, the contested application consists of a combination of the English word ‘DRINK’ and the suffix ‘OPOLY’ and some figurative elements (a coloured stylisation and a depiction of one person drinking and other person lying on the letters ‘POLY’). When consideration is given to the meaning of the word ‘DRINK’ in English (as explained in section a) above) or to the figurative elements, there are indications that the contested sign suggests the idea of people drinking alcohol or even get drunk.
The evidence filed by the opponent clearly show that the public associates the MONOPOLY mark with a wholesome family game that is mainly aimed to children, and this image would suffer if another similar mark resembling the MONOPOLY mark evokes unhealthy costumes and encourages alcohol consumption. The opposition Division agrees with the opponent in that these characteristics are contrary to the image of the opponent’s mark and that would diminish its power of attractiveness.
On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to be detrimental to the repute of the earlier trade mark.
Other types of injury
The opponent also argues that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark and would be detrimental to the distinctive character of the earlier trade mark.
As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would be detrimental to the repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.
Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.
Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.