Kreativni claimed that the mark should be revoked from November 1957 based on the rule that a mark should be revoked if it is not used in the five-year period after the mark is registered. In addition, Kreativni argued that there was no genuine use in three other five-year periods.
Evidence submitted by Hasbro showed that annual UK sales figures run into millions of pounds. Some 20 million sets of the MONOPOLY board game have been sold in the UK since 1935.
Kreativni submitted that “…documentary evidence furnishing proof of use of the mark shall consist of indications concerning the place, time, extent and nature of use of the trade mark for the goods in respect of which it is registered. Moreover, it is stipulated that the evidence shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing, sworn or affirmed, or having a similar effect under the law of the state in which the statement is drawn up.”
The registrar did not accept Kreativni’s criticism of Hasbro’s evidence as far as it concerned alleged deficiencies in the types of materials exhibited and the fact that the witness was employed by Hasbro. They distinguished between the considerations and requirements when filing evidence of use under the European Trade Mark Regulations which, the registrar noted, are not applicable to the UK. Further, the registrar highlighted that the date offered by Kreativni was incorrectly calculated and therefore the mark had in fact been used during the relevant period.
The registrar noted that an assessment of genuine use is a global assessment, which includes looking at the evidential picture as a whole.
The registrar considered that Hasbro amply showed that it had made use of MONOPOLY in relation to the goods for which it was registered, significantly in the final relevant period.
Although the use shown reflected a single type of board game, the registrar noted that “it would be pernickety to try to sub-categorise the specification”. The specification which was registered, “board games”, was therefore a fair specification.
Finally, the registrar dealt with the form of the mark used because the Trade Marks Act 1994 states 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”. On this point it was noted that the distinctiveness of the mark as registered was in the plain word MONOPOLY. The mark as used was presented on a black rectangle and contains a shaded element to the white letters:
The background was considered to make no difference to the distinctive character of the mark as registered; the background was there to enable the letters, which are white, to be seen. It also made no difference that the letters were white instead of black because the registration of a plain word mark notionally covers such use.
The registrar concluded that the mark as used remained, without doubt, the word MONOPOLY.
Overall, Kreativni’s throw of the dice was unsuccessful as the application for revocation failed and they were ordered to pay Hasbro a contribution to their costs.
Case details at a glance
Jurisdiction: United Kingdom Decision level: UK Intellectual Property Office Parties: Hasbro Inc, Kreativni Dogadaji d.o.o. Date: 14 August 2018 Citation: O/501/18