A company from Croatia has requested the trademark Drinkopoly in the European Union. Due to the different prefix, the trademarks are too different to base an opposition on risk of confusion. But Hasbro has to act, otherwise the suffix “opoly” will become diluted and it will be hard to defend its trademark.
Claiming the reputation of the trademark is in these kind of cases a solution. Hasbro files the opposition and claims the dilution as well as the tarnishing of the trademark. And with success. The EUIPO recognizes the reputation and finds a link between the trademarks: it is likely that the consumer will associate the trademarks. Finally, the EUIPO is of the opinion that the trademark Drinkopoly is detrimental to the reputation of Monopoly, this caused by the reference to drinking games.
Interesting was the argument of Hasbro that the trademark was detrimental because of the inferior products. EUIPO rejects this argument as this argument is highly subjective. Moreover, this could be an argument for the Applicant stressing that the products are equal of quality of even better. “Therefore, in assessing whether use of the contested trademark is likely to damage the reputation of the earlier trademark, the Opposition Division can only consider the goods as indicated in the list for each trademark. 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.”
Finally EUIPO states that under Article 8(5) EUTMR, the proprietor of a reputed trademark is protected against the use of a similar trademark for goods and services of a comparable nature but obviously inferior quality. “The erosion of the high esteem and reputation enjoyed by the earlier trademark 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 trademark with the earlier trademark, 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 trademark among its clientele. Therefore, without such a connection, detriment to the repute of the earlier trademark is not likely to occur. If, however, such a connection were to exist, it would inevitably mean that use of the contested trademark would take advantage of the reputation of the earlier trademark. Such advantage would necessarily be unfair because it is for the proprietor of the trademark with a reputation to exploit and benefit from such reputation. As a matter of principle, unauthorised parties may not exploit an earlier trademark’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 trademark, but because unfair advantage would be taken of the distinctive character or repute of the earlier trademark.”
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