Another Christmas tale

I previously brought you the tale of the Cocktail baubles and this year I bring you a tale of another Christmas stalwart, namely MONOPOLY, the board game.

The United Kingdom Intellectual Property Office (the UK IPO) has recently considered and confirmed in a decision concerning an application to revoke the trade mark MONOPOLY that there are essential and important differences between how evidence is presented before the UK IPO and how it may be presented before the European Union Intellectual Property Office (the EU IPO). The action appears to have been part of an ongoing dispute between Hasbro who own the MONOPOLY trade mark and the Croatian based applicant for revocation Kreativni dogadaji d.o.o. (Dogadaji) who were represented before the UK IPO by their German lawyers, (EU based representatives may represent clients in jurisdictions other than their own, which the writer thinks is not always to a client’s advantage).

Dogadaji argued that the trade mark MONOPOLY had not been used in its registered form, and that the evidence submitted did not prove that it had been used and was in fact deficient and should not be taken into account. They also argued that MONOPOLY is simply the name of a game, and is not a trade mark at all, and that because of this, the trade mark actually appearing on the product is Hasbro or Hasbro’s predecessor in title Parker.

The UK Trade Marks Act 1994 (the Act) stipulates that use of a trade mark “includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”. The registered trade mark is the plain word MONOPOLY, and therefore, the hearing Officer said, distinctiveness lay in that plain word, the fact the word is presented in white on a black rectangle and contains a shaded element to the white letters makes no difference. The background is there to enable the letters, which are white, to be seen. The shading to the letters is unremarkable, and ‘insignificant in terms of distinctive character’. It also makes no difference that the letters are white instead of black because the registration of a plain word mark covers such use.

In the recent case of Walton International Ltd & Anor v Verweij Fashion BV [2018] EWHC 1608 (Ch) (28 June 2018), Arnold J. had summarised the case law on genuine use of trade marks by reference to a number of decisions of the Court of Justice of the European Union (the CJEU). This analysis included the proposition that “All the relevant facts and circumstances must be taken into account”. Hasbro had filed evidence to show that the MONOPOLY board game had been widely advertised in the Argos catalogue. Dogadaji criticised the fact that Hasbro had not actually filed any evidence to prove that the catalogue in question had ever been published or circulated in the UK. The Hearing Officer dealt with this by saying that whilst the mere existence of catalogues does not necessarily prove that they were distributed, “the catalogues in question are Argos catalogues. It is a notorious fact that Argos regularly produces catalogues in the UK”. Therefore, in this instance, the fact that the mark appears in Argos catalogues carries weight, especially since some of the invoices showing sale of goods bearing the mark were to Argos, from Hasbro’s European subsidiary.

Indeed, Dogajadi further criticised Hasbro’s evidence because it did not comply with the regulations governing the filing of comparable evidence in the EU IPO. However, requirements when filing evidence of use in the EU IPO under the European Trade Mark regulations are not applicable to the UK. The provisions as to evidence under the UK Trade Marks Rules are far less prescriptive and, unlike the EU IPO where witness statements must be supported by corroborating evidence, an unsupported witness statement may be accepted in evidence. The EU IPO takes the view that an unsupported witness statement made by a representative of the proprietor is of little weight. (Indeed the EU IPO Board of Appeal has held that a decision by their UK counterpart was not relevant simply because of the procedural differences).

The statement of truth contained in a witness statement is not just a throwaway line. It imposes a burden on the maker of the statement, which should not be taken lightly. It is an alternative approach to the EU IPO requirement to submit corroborating evidence. The UK IPO system is justified on the basis that witnesses who tell untruths can be exposed through the power of cross-examination, and may be subject to serious consequences if exposed. It is therefore, well established that in the absence of successful challenge, or obviously incredible contents, the Hearing Officer should assume that the witness believes the contents of the witness statement to be true. As discussed by Arnold J in Walton International Ltd & Anor v Verweij Fashion BV the CJEU has made it clear that an assessment of genuine use is a global assessment, which includes looking at the evidential picture as a whole.

Hasbro had amply shown that it had used MONOPOLY in relation to the goods for which it registered, by filing examples of the mark on the goods themselves, by filing invoices to major UK retailers, by filing copies of pages from the Argos catalogue (a major UK retailer), by filing press extracts including market research statistics, and by showing considerable sales and advertising figures. Dogajedi had not asked for a hearing at which the witness’s credibility could have been tested by cross-examination and the evidence had not previously been challenged and so the credibility of Hasbro’s witness could not be called into question at this stage of the proceedings.

Finally, Dogajedi argued the purpose of the game is to achieve a property market monopoly and that the actual trade marks under which the game had been sold (“the indications of trade origin”) are the trade marks Parker and Hasbro. However, it makes no difference to the question of whether MONOPOLY has been used that other trade marks are also used in relation to the goods.

Secondly, the Hearing Officer disagreed that the use shown of MONOPOLY did not constitute trade mark use. There is no bar against titles of games as trade marks. It depends upon the facts of the case. The question is not whether MONOPOLY could be used as a trade mark for the goods, but whether it had been used as a trade mark. In any event, consumers would not view MONOPOLY as denoting a characteristic of the goods instead of indicating trade origin. Hasbro’s evidence is unequivocal: MONOPOLY had been used as a trade mark in relation to the goods.

The decision largely confirms what UK practitioners have long recognised. Although decisions of the CJEU are legally binding and must be followed, the decisions and procedures of the EU IPO may be persuasive but do not bind or set any precedent for the UK IPO.

Eric Ramage is a UK Chartered Trade Mark Attorney and representative before the EUIPO and is of Counsel in Edwin Coe’s IP department.  He helped lobby for the introduction of the EUTM, has been a Council Member of the European Communities Trade Mark Association since 2007 and is a member of its Brexit Committee, and helped draft ECTA’s position paper to the European Commission on that subject.

If you wish to discuss this topic further, please contact any member of the Edwin Coe Intellectual Property team.

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