By Diana Muller
Many of us have grown up playing the famous board game known as MONOPOLY where we learned to acquire real estate, collect rent, build houses and hotels while forcing other players or opponents into bankruptcy or go to jail! It is a good way to legally start accumulating a fortune without spending or collecting real money and strategizing future business opportunities.
During its many years of existence, the trademark MONOPOLY and the ownership of the game itself have gone through challenges, intrigues, claims of ownership and various legal proceedings. Some legal fights took place in the United States but there have also been disputes in the UK. Hasbro recently faced a serious attempt by a Croatian company called Kreativni Dogadaji d.o.o. to revoke Hasbro, Inc.’s famous MONOPOLY trademark in the United Kingdom. On May 5, 2017, the Croatian company filed its application to revoke the registration for MONOPOLY claiming that the mark was not put to genuine use for the five-year term after the mark was registered and in three other five-year terms thereafter.
The mark MONOPOLY has been registered in the UK for board games under number 711981 since August 12, 1954. Kreativni based its claims under section 46 (1) (a) of the Trade Marks Act 1994. According to the UK Trade Marks Act, the proprietors of a registered mark “have five years commencing the day after the completion of the registration in which to commence use of the trade mark.” Section 46 (1) (a) also provides that the registration of the mark may be revoked if “the use of the mark has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use.”
The UK Intellectual Property Office considered that the overwhelming proof of use submitted by Hasbro as well as other elements that were discussed in the case were sufficient to uphold the validity of the trademark MONOPOLY and its registration. Hasbro submitted evidence showing that annual UK sales amounted to millions of pounds and “20 million sets of the MONOPOLY board game have been sold in the UK since 1935.” Kreativni submitted objections to Hasbro’s documentary evidence but the registrar did not accept them based on the fact that Kreativni mistakenly applied the requirements regarding the filing of evidence under the European Trademark Regulations, which are not applicable to the UK trademark registration.
The registrar also dealt with objections to the variations of the form of the mark as used by Hasbro and its impact regarding the originally registered mark and its distinctive characters. The conclusion by the registrar was that the mark, as used with or without a background, consisted of the word MONOPOLY and should remain registered. The decision by the registrar was rendered on August 14, 2018. Kreativni has been ordered to pay Hasbro £1500 towards its costs. Not that much for a case that may have cost a substantial amount to both parties.
It seems quite amazing that given the popularity of the name MONOPOLY on a worldwide basis, a party decided to challenge the rights in this trademark in the UK. However, the mark MONOPOLY has already been challenged in the past in the United States. The board game MONOPOLY was developed in the early 20th century. The earliest version was known as “The Landlord’s Game” designed by Elizabeth Magie which was first patented in 1904. Thereafter, in 1933 Mr. Charles Darrow developed the MONOPOLY board game and was considered its creator, although other board games were developed that included buying and selling the property and developing the land. Around 1934 Parker Brothers (Hasbro’s predecessor in title) acquired the rights and entered into an agreement with Darrow. Parker sold a version of its MONOPOLY game which has become well known for many years.
The headache for Parker Brothers started when Ralph Anspach, an economics professor at San Francisco State University created the ANTI- MONOPOLY game and instituted legal actions against Parker Brothers and its parent company General Mills challenging their trademark rights in the term MONOPOLY. Mr. Anspach’s game included variations of the game developed by Charles Darrow in 1933, “except that Anspach’s games give monopolists and competitors an equal chance to win” and “players could break monopolies.”
The legal action brought by Professor Anspach was: Anti-Monopoly, Inc., v. General Mills Fun Group, Inc., 684 F .2d 1316. It resulted in a decision by the Ninth Circuit Court of Appeals in 1982 that declared MONOPOLY to be a generic term and canceled the game owners’ trademark. The appeals court relied in part on a “motivation” survey conducted for the Anti-Monopoly Inc. company. The results of this survey showed that 65% of the respondents’ answers indicated that they did not associate the game MONOPOLY with the manufacturer. Parker Brothers claimed that as the owner of the MONOPOLY trademark the product was identified with its company and was guaranteed by it. However, the court decided that a registered mark should be canceled if it becomes “the common descriptive name of an article” and not associated with the manufacturer in the mind of the consumers.
In 1983 the case was appealed to the Supreme Court, but the Court refused to hear it and left standing the lower court decision which ended Parker Brothers’ monopoly on MONOPOLY. Subsequent efforts by Parker Brothers and others resulted in a revision of the Lanham Act which was amended in 1984 (Public Law 98-620: amends the Lanham Trademark Act to state that a registered trademark has not become generic and therefore cancelable solely because such mark is also used as a name of or to identify a unique product or service. Makes the primary significance of the mark to the relevant public rather than purchaser motivation the test for whether or not the mark has become a generic term). The case was finally settled in 1985, with MONOPOLY continuing to be a valid trademark owned by Parker Brothers, and Anspach assigning the ANTI-MONOPOLY trademark to Parker but maintaining its use under license. Hasbro, as a result of its acquisition of Parker, now owns many trademark registrations for MONOPOLY by itself and as part of combined marks including a registration for computer games.
The UK case has shown the value of maintaining good evidence of use of a registered trademark within the terms provided by the law. Most countries require that trademark registrations be put to genuine, commercial use within three to five years from the date of registration to avoid a cancellation action on the basis of lack of use or abandonment. Moreover, it also teaches us the importance of depicting the trademarks on products in the same manner as originally registered. Slight variations may be acceptable as long as the commercial impression remains the same. Trademark owners must avoid any vulnerability that may result in a potential cancellation of their registered marks.
It is quite remarkable that from the origin of the MONOPOLY game (which was hand-made) to the current digital versions, many interesting trademark and IP issues in general have been faced in an attempt to monopolize this precious and priceless game.