Playing the game – the Monopoly trade mark that is!
The trade mark game
Monopoly’s origins are perhaps less well known. Did you know that the board game derived from The Landlord’s Game, as a way of promoting ideas about taxation? It was first published in the UK by Waddingtons in 1935 under licence from Parker Bros. In 1991 Parker Bros, and with it the Monopoly franchise, was acquired by the toys manufacturing giant, Hasbro. Over the years, Hasbro understandably saw Monopoly as a valuable piece of intellectual property and has filed a series of trade marks to cover the following classes:
9 - Computer Programs, Sound & Video Recordings and the Playing of Games
14 - Clocks, Watches
16 - Paper Articles, Stationery
25 - Clothing
28 - Board Games
35 – Competitions, and
41 - Entertainment Services.
A registration for board games is obviously appropriate. Competitions, however, seems less so – what might that cover? A Monopoly cake baking competition perhaps? How would that work?
The trade mark trick
A trade mark, once registered, can be renewed every 10 years indefinitely. However, there is an important caveat here: if a trade mark is not used in relation to any goods or services for which it is registered for a period of 5 years, then it may be revoked.
Revocation may be partial, so the trade mark survives but is lost to the class or classes where there has been no genuine use for a period of 5 years. A favourite trick of trade mark owners has been to file new applications rather than merely renew the existing registration. Where an owner knows that the mark hasn’t been used in a certain class, it is strategically sensible to apply for a new mark contemporaneously with the renewal date of the existing mark. That way the risk of revocation through non-use may be avoided.
This form of brand protection strategy is something we at RWK Goodman have come up against to the prejudice of otherwise unconnected and non-competing businesses. In a real life case we handled, our client, a wealth management company, was blocked from registering a European trade mark application by an existing international telecommunications company. Flexing its commercial (read financial) muscle, the telecommunications company insisted that the extremely wide specification of its marks (all classes) and overlapping protection periods were justified because it was so famous and required extensive trade mark protection to protect its growth! Our client didn’t have deep enough pockets to mount a legal challenge.
This ‘renew and re-file’, known as ‘ever-greening’, practice has obvious benefits to trade mark owners, but is it fair? And is it proper use of trade mark registration? Hasbro might be playing the game, but is it cheating? The European General Court recently considered this in Hasbro Inc. v. EUIPO T-663/19 [21.04.2021].
A Croatian company called Kreativni Događaji filed a cancellation suit against a Monopoly registration of classes 9, 16, 28 and 41 trade marks in the EU arguing that it was a repeat filing and therefore done in bad faith. The law on bad faith is that where a trademark is filed with no intention to use, and with the dishonest intention of undermining the interest of third parties, or an intention to obtain exclusive rights for purposes falling outside the function of the trade mark, then the application shall be refused, or the registration revoked, as appropriate.
After hearing the evidence including witnesses from Hasbro, the General Court held that the filing in 2010 was indeed done in bad faith. The Court was not impressed by the submission by Hasbro that its filing strategy was common practice and/or that it acted on the advice of Counsel. The decision of the General Court is a warning that a repeat filing made to avoid the consequences of non-use is a relevant factor to establishing bad faith on the part of the filing owner.
The message here? By all means, play the game, but play it fairly and in good faith.