Date: 28 May 2019
A recent decision from the UKIPO (O/501/18) provides an important lesson on the differences between the nature and form of evidence that a trade mark owner must file when seeking to prove genuine use before the United Kingdom Intellectual Property Office (UKIPO) compared with the European Union Intellectual Property Office (EUIPO).
The subject of this particular case, the MONOPOLY trade mark, has been registered in the UK for board games since 1954. The game itself was first published by Parker Brothers in the US in 1935. Waddingtons obtained a licence to produce and market the game outside the US, including the now familiar British version. In 1991, Hasbro acquired Parker Bros. and, therefore, Monopoly.
In 2017, a Croatian company called Kreativni Dogadaji applied to revoke Hasbro’s famous MONOPOLY trade mark registration. The grounds of revocation were that the mark had not been genuinely used pursuant to section 46(1)(a) of the Trade Marks Act. Kreativini claimed an effective revocation date of 4 November 1957. However, this was way too early. Kreativini’s calculation was based on the day that followed the expiry of the five year period after the mark was filed. However, the effective revocation date should have been based on the day that followed the expiry of the five year period after the mark had been registered, meaning that the earliest possible date for revocation of the MONOPOLY mark was 13 August 1959. The UKIPO’s Hearing Officer found that revocation was impossible on this basis alone.
The Hearing Officer was equally unimpressed by Kreativini’s subsequent throw of the dice under section 46 of the Act. Kreativni argued that use of MONOPOLY could not indicate the origin of the goods in question as the purpose of the game was to achieve a property market monopoly. They also argued that Hasbro’s evidence failed to prove that the mark had been used and that, because MONOPOLY was simply the name of a game and not a trade mark at all, the trade mark actually appearing on the product was HASBRO, or Hasbro’s predecessor in title PARKER.
The Hearing Officer said that although “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”. The fact that the mark appeared in Argos catalogues carried even more weight when considered alongside the fact that Hasbro provided invoices showing sales to Argos of the goods bearing the mark.
As regards the witness statement, the Hearing Officer noted that the provisions under the UK Trade Marks Rules meant that “witness statements shall be the normal form for evidence at hearings, and must be signed and dated and include a statement of truth” and were far less prescriptive than the EUIPO’s approach, which was that “a witness statement made by a representative of the proprietor is of little weight unless it is corroborated by independent evidence” (see, for example, Rodcraft Pneumatic Tools GmbH & Co. KG v Rolson Tools Ltd (Case R 1075/2005-2 of 8 June 2006)).
The Hearing officer noted that “although the use shown reflects a single type of board game, it would be pernickety to try to sub-categorise the specification”. The MONOPOLY mark covered “board games” in Class 28 which the Hearing Officer said was “a fair specification”.
Under the Trade Marks Act 1994, “use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in form in which it was registered”. In that regard, the Hearing Officer ruled that the distinctiveness of the mark as registered lay in the plain word MONOPOLY and that the shading of the letters and background in the form of the mark as used (see below) made no difference.
Hasbro was able to provide evidence of use of the trade mark MONOPOLY within the UK in respect of “board games” for many years, to the satisfaction of the Hearing Officer, who found that “consumers would not view MONOPOLY as denoting a characteristic of the goods instead of indicating trade origin”.
Kreativini did not pass go and did not collect £200: their application for revocation was dismissed and they were ordered to pay Hasbro’s costs. This decision highlights the importance of correctly calculating the effective revocation date (albeit the Hearing Officer did note that this error in the present case did not affect the outcome). Further, where genuine use has been established, the form in which the mark has been used will - provided it does not alter the distinctive character of the mark as registered - suffice to defeat attempts to revoke valued trade marks.
It also confirms that, unlike the EUIPO, the UKIPO can accept an unsupported witness statement in evidence. The justification for the UKIPO’s system is that “witnesses who tell untruths can be exposed in the Registry through the power of cross-examination at a live hearing, and may be subject to serious consequences if exposed” (see G&D Restaurant Associates Limited v Pasticceria E Confetteria Sant Ambroeus S.R.L, BL O/371/09). In contrast, the EUIPO’s Boards of Appeal rarely have oral hearings – in fact, there seems to have only been two in 23 years.
On 3 August 2018, the Second Board of Appeal ordered oral proceedings to be held on 19 November 2018 regarding Case R 1849/2017-2, in which Kreativini appealed against the EUIPO’s Cancellation Division’s decision to reject its application for a declaration of invalidity against Hasbro’s EUTM for MONOPOLY. However, due to “technical problems” with the EUIPO’s notoriously temperamental website, further information is not available.