Alan Chong v Tonka Corporation

[1994] ATMO 27

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:     49 opposition by Tonka Corporation to the registration of trade mark application number A488032, a mark filed in the name of Alan Chong.

Trade Mark application number A488032 is a composite mark.  There are two principal features.  First there is a crowd of perhaps turn of the century figures, at a party in a park. Some are dancing to the music of a band playing from a rotunda.  Second, prominently displayed in the upper right quadrant is the word MUSICOPOLY.

This trade mark was lodged on 30 May 1988 by Mr Alan Chong of Melbourne.  He sought to register the mark for a music game  and nominated class 28.  On 18 April 1991 his mark was advertised in the Official Journal as being accepted for registration for these goods.

The application is now opposed by Tonka Corporation of Minnesota, United States of America (Tonka).  Tonka served evidence in support of their opposition, Mr Chong served evidence in answer, and Tonka responded with evidence in reply.  This evidentiary process involved the granting of a number of extensions of time and was concluded on 18 October 1993, some 30 months after acceptance of this mark had been advertised.

The hearing of the opposition was scheduled for 7 February 1994 in Melbourne.  However,  in early February the attorneys acting for the trade mark applicant advised the Office that, conditional on  Tonka's agreement to costs, Mr Chong intended to withdraw the trade mark application.  Apparently no agreement was achieved.  The trade mark application was not withdrawn and the hearing therefore proceeded at the scheduled time.

The hearing was before me.   Mr Bruce Caine of Counsel appeared for the opponent.  He was assisted by Mr Peter Nicholls of the Melbourne attorney firm of Callinan Lawrie.  There was no representation on behalf of Mr Chong nor did Mr Chong  appear himself. 

Grounds of the opposition

The opposition cites various grounds. However Mr Caine, in commencing his submission, said the only grounds to be pressed were those under section 33 and 28 of the Trade Marks Act.

These grounds in varying degrees concern the following 9 registered trade marks. Over the years most of these marks have been in the names of Parker Bros. and subsequently, Kenner Parker Toys. All are now shown as registered in Tonka's name.

1	A69538	MONOPOLY	class 28	Games of chance and skill
2	A327459	MONOPOLY	class 41	Amusement services, arrangement of contests and meetings, education, entertainment, occupation of leisure times, radio and/or television entertainment, radio and/or television quiz programmes and amusement centres for leisure, recreation services
3	D338155	MONOPOLY	class 9	Electrical and electronic toys and games of chance and/or skill in this class, computers usable for playing games, dedicated computers for playing games, viewing screens for use with such computers, printer apparatus for use with such computers, computer software for playing games of chance and/or skill, floppy discs, hard discs, cassettes, magnetic tapes, and all other means for storing computer software, all other goods in this class usable for playing games or usable in games of chance and/or skill, and parts of and accessories in this class for such goods.
4	A409390	ANTI-MONOPOLY II  ANTI-MONOPOLY 2  ANTI-MONOPOLY X ANTI-MONOPOLY	28	All goods in the class; games and playthings; board games; electronic games in this class;  computer games in this class; electronic board games in this class; digital electronic games in this class; battery-powered games; electrically powered games in this class
5	A404491	ANTI-MONOPOLY	28	All goods in this class; including games and playthings, board games, electronic games in this class, electronic board games, digital electronic games in this class, battery powered games and electrically powered games in this class
6	A419262	MONOPOLY with a man device	28	Toys, games and playthings; including games of chance and/or skill, board games and equipment for playing board games
7	A435986	MONOPOLY	25	All goods in class 25 including knitted and woven tops, knitted and woven bottoms (clothing), dresses, nightwear, underwear
8	A457536	OPOLY	28	Games of chance; games of skill; games of chance and skill; such parts and accessories for all of the foregoing as are included in this class;  all other goods in this class.
9	A545587	TOTOPOLY TOT-OPOLY TOT OPOLY	28	Board games and such parts and accessories therefor as are included in this class

Evidence in Support

Tonka's evidence in support comprises 12 declarations. Two are by Peter Norman Nicholls, Tonka's attorney.    Mr Nicholl's first declaration (Nicholls 1) is dated 14 April 1992; his second declaration (Nicholls 2) is dated 14 January 1993.    The third declaration is by Donald M. Robbins, vice president of Tonka Corporation.  His declaration is dated 3 February 1993.

There are 9 so called trade declarations.  These declarations are from members of the public who, through their business dealings, would be expected to have a knowledge of use of the trade marks in the market.

Evidence in Answer

Mr Chong's evidence in answer consists of three statutory declarations.  The first, dated 4 August 1993,  is by John Christiansen, Mr Chong's attorney.  The other two are trade declarations.  One dated 5 August 1993 is by Jennette Margaret Anastasia James. Ms James is proprietor of a secretarial consultancy.   She has had experience in the retail, film production, advertising and marketing industries.  She has also had musical training.  The second is dated 6 August 1993, and is by Haydn Christopher Richards.  Mr Richards is a musician.

Evidence in Reply

In Tonka's evidence in reply is, first, one more declaration from its agent, Mr Nicholls: this declaration (Nicholls 3) is dated 18 October 1993.  Second is a declaration from Mark Joseph Callinan.  Mr Callinan is an experienced attorney who contributes his evidence on the basis of his trade mark expertise.

Burden of Proof

Having taken me in some detail through the evidence, Mr Caine commenced his submission by reminding me that in satisfying an inquiry as to whether a trade mark fails on the basis of deceptive similarity, the applicant for registration bears the onus of showing that the mark in suite is not likely to deceive or cause confusion.  If the evidence in support of the opposition establishes a real likelihood of deception and confusion, and the applicant is not able to rebut that evidence, then the trade mark application should fail (Shanahan, D.R., Australian Law of Trade Marks and Passing Off  2nd ed.  p169). 

I have no argument with this proposition.  It is well established law dating back to the directives of Eno v Dunn (1890) 7 RPC 311 and Jafferjee v Scarlett (1937) 57 CLR 115.

The onus that lies with the opponent, however, is to establish that deception and confusion are likely. 

Section 33

Turning to the section 33 ground, Mr Caine first dealt with the meaning of sub-section 6(3) which defines deceptive similarity and reads:

For the purpose of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly  resembles that other trade mark as to be likely to deceive or cause confusion.

The meaning of this sub-section has been clarified by Justice Richards in  Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd. [1979] RPC 410 at 423. His Honour says

'Deceived' implies the creation of an incorrect belief or mental impression and causing 'confusion' may go no further than perplexing or mixing up the minds of the purchasing public..... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.  

This, said Mr Caine, was precisely the species of deception of concern to Tonka and which it thought was likely to result if the MUSICOPOLY trade mark was allowed to proceed to registration.

For the purposes of section 33, it is necessary to look at coincidence between the respective trade marks and their goods. There is no doubt that the goods claimed by Mr Chong, namely a music game in class 28, overlap with the goods comprehended in the Tonka's five class 28 marks (see above).  These marks are

1.   A69538          MONOPOLY 

2.A409390        ANTI-MONOPOLY II
ANTI-MONOPOLY 2
ANTI-MONOPOLY X
ANTI-MONOPOLY

3.   A404491        ANTI-MONOPOLY 

4A419262        MONOPOLY with a man device

5.A457536        OPOLY

6.A545587        TOTOPOLY
TOT-OPOLY
TOT OPOLY

The last of these marks, A545587, was lodged in November 1990, some 2 years after MUSICOPOLY.  TOTOPOLY (and its variants) is thus not relevant to the section 33 ground. The remaining five marks, however, all pre-date MUSICOPOLY and, in view of the overlap of the goods, the opposition based on section 33 depends on findings of whether or not MUSICOPOLY is substantially identical or deceptively similar to any one of these five trade marks.

Mr Caine referred me to the familiar discourse recorded by Justice Windeyer in his judgment in the Oil Drop case (The Shell Company of Australia Limited v. Esso Standard Oil (Australia) Limited, (1963-4) 109 CLR 407 at 414-5) and argued that when MUSICOPOLY  was compared with these five marks it failed on the test of deceptive similarity.

Deceptive similarity

A comparison of MUSICOPOLY with the five marks that Tonka relies on involves, however, two different kinds of similarity. First, the application mark MUSICOPOLY coincides with the Tonka trade marks, MONOPOLY and ANTI-MONOPOLY in respect of a common suffix.   Second, MUSICOPOLY  contains in toto the Tonka trade mark OPOLY.  These different varieties of similarity likewise entail two different branches of examination.  

First then, in comparing MUSICOPOLY with the MONOPOLY and  ANTI-MONOPOLY marks , Mr Caine  drew my attention to John Fitton & Co. Ltd's Application, (1949) 66 RPC 110 - the EASYJEST case, and in particular to the finding concerning marks which through a common element appear to be related.  At p113 of EASYJEST, the Assistant Comptroller finds that no limitation should be imposed on

the nature of the confusion or deception ... whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods. 

Mr Caine pointed out that Tonka has already established a family of marks built on the suffix  -opoly  whose use commenced (as per the Robbins declaration) at the Australian launch of MONOPOLY in the early 1940s.  The Nicholls (1) and Nicholls (3) declarations assert that the suffix -opoly is far from common.  Mr Nicholls ascertains that it occurs in only three English words, monopoly, duopoly and oligopoly; and that the only registered trade marks with the -opoly ending are marks that belong to the opponent. Against this background, Mr Caine submitted that the concerns expressed in the EASYJEST case strongly support the opponent's case for refusing MUSICOPOLY. The Tonka marks, he said, are famous - a fact attested to by the trade declaration in the opponent's evidence (and confirmed furthermore by the applicant's James and Richards declarations).  MONOPOLY said Mr Caine, should be considered to be so well known as a game as to be a household word.   If MUSICOPOLY was allowed in the wake of the famous MONOPOLY and its family of variants (all of which are already on the Register and, apparently,  in the market) then, said Mr Caine, it was very likely indeed that the public understanding of the trade mark's provenance would be confused.   The public, he claimed, would be likely to ascribe to them a common origin, assume that Mr Chong's MUSICOPOLY product came from the same stable as MONOPOLY, and thus  be deceived.

Turning next to the comparison of MUSICOPOLY and the Tonka mark A457536, OPOLY.Here the Tonka mark is a part of the application mark and Mr Caine referred me to the findings of Justice King in Seven-up Co v. Bubble Up Co Inc.(1987) 9 IPR 259.

In the final analysis of that case Justice King says

It seems to follow that if the word 'up' is a distinct part of the mark applied for, in the sense that it is not merged into the totality of the mark so as no longer to have a distinctive appearance, sound and meaning, the use of the mark applied for would constitute use of the registered mark, and it would be beside the point that the mark applied for incorporates other features, prominent or otherwise, which are not to be found in the registered mark.  I am not now evoking the possibility that the use by the respondent of the trade mark UP would lead the public to think that all marks of which UP is a composite but distinct part are variants of the trade mark UP, pointing  to the same manufacturing or trade origin.  This would I think, be a hard argument to sustain in view of the inherent lack of distinctiveness of the word 'Up'  as a trade mark, a matter which I think I am entitled to take into account is deciding whether by reason of use of the conflicting words there would be a likelihood of deception or confusion, even though the validity of the registration of 'up' is not in present proceedings open to attack on this ground.  However this may be, I find that in the context of the mark applied for the word 'Up' is a prominent and distinctive feature, retaining its distinct appearance, sound and meaning, and that it must be taken that the use of the mark applied for would constitute use of this registered mark.

Mr Caine, however, drew some distinctions between the relative positions of UP and BUBBLE UP (the marks under consideration by His Honour Justice King) and the marks OPOLY and MUSICOPOLY (which I am to consider) . He pointed out first, that OPOLY as a mark, is not short on distinctiveness. On the contrary, it is well qualified as a distinctive mark in terms of section 24.    Second, he reminded me that Tonka has already established OPOLY as the basis for a family of the related marks MONOPOLY, ANTI-MONOPOLY and OPOLY.Third he pointed out that MONOPOLY, with its particularly long standing reputation,  is a prominent member of that family .

Discussion re the section 33 grounds

In relation to the opponent's reputation, I note the following.  The nine trade declarants (see Evidence in Support) all hold positions which qualify them to speak with authority in respect of board games.  Five are managers of retail outlets dealing with toys, books or games; two are directors of toy businesses; and one is a buyer for a national chain of retailers.  Their experience in the business range from 11 to 29 years; and they are located across the States of Western Australia, Tasmania, Queensland and New South Wales.  I note that Mr Christiansen, in his declaration, raises some criticism  as to the independence of these declarants.  However, as Mr Caine pointed out, no evidence has been put forward to impugn their veracity or their trade experience, and their evidence in any case is independently corroborated through the Business Review Weekly (see below).

The declarations completed by these experienced people are in questionnaire form.  They were asked Do you know the name MONOPOLY? and With what do you associate it?  All 9 declarants agreed that they do know the name MONOPOLY and said that they associated the name either with Parker Bros. or Kenner Parker.  As mentioned above, these are the names of previous proprietors of the MONOPOLY mark, and reference to them establishes association of that mark with the opponent's predecessor.  

The Robbins declaration sets out that MONOPOLY has been in use in Australia since the 1940s, and shows dollar and unit turnover since 1974 at a very impressive level.

The Nicholls (2) declaration exhibits at PNN 6, copies of pages 106, 107, 108 and 111 of the Business Review Weekly for 27 November 1987.  The second paragraph of the article on these pages entitled Monopoly remains just  that reads on p106 as follows

If a toy product is still selling after two years, it is regarded as a  hit.  If it survives for three years, it is a runaway success.  If it continues to sell after 40 years, it is a phenomenon.  Since its local debut just after World War II, the board game of Monopoly has sold an estimated four million units in Australia.  It continues to rank as one of the best-selling toys and games in Australia.  This year, it holds the top spot among board games, just ahead of another stayer,  Scrabble.

The end point of all this is that I can agree with Mr Caine and Business Review Weekly that the reputation of the trade mark MONOPOLY is established and is very substantial. 

I consider next, the question of deceptive similarity between MUSICOPOLY and Tonka's trade marks MONOPOLY and  ANTI-MONOPOLY. 

The Christiansen declaration asserts the suffix element in MUSICOPOLY is -poly rather than '-opoly'.  Mr Christiansen brings no evidence to support this claim.  He does not indicate, for example, that this was the basis on which Mr Chong built the mark or that any history of this kind can be expected to affect pronunciation.  In the absence of support of any kind, I cannot give his assertion any weight.   

I agree with the alternative put by Mr Caine that the elements shared by MUSICOPOLY with the words MONOPOLY and ANTI-MONOPOLY  is -opoly .

As a general principle in the comparison of trade marks for similarity, the prefix of the words is acknowledged to be more important  than the suffix (London Lubricants (1920) Ltd.'s Application, (1925) 24 RPC 264). However, as a suffix,

 -opoly

exhibits some special qualities.  There is the scarcity of words that have this ending and that despite this rarity one of the words in which it occurs -    monopoly - is a word in very wide currency.  Further, as part of this word, the suffix has an exceptionally clear and distinctive sound.  This combination of uncommon occurrence and widespread recognition gives the suffix -opoly a notable singularity.  When I consider this singularity in combination with the established existence of the opponent's family of MONOPOLY and ANTI-MONOPOLY trade marks, and the fame surrounding one of those marks (MONOPOLY), it seems clear to me that buyers seeing MUSICOPOLY applied to board games, would indeed be likely to wonder whether or not this game and MONOPOLY games come from the same source.   I conclude that  the mark MUSICOPOLY is likely to cause the kind of contextual deception identified in EASYJEST (supra).  This equates to the incorrect.... mental impression and perplexing of the mind in Justice Richards' explanation of the meaning of section 6 per the terms deception and confusion which in turn define deceptive similarity as per section 33 (see Hy-Line Chicks, supra).   I therefore must accept that in the present circumstances and through the evidence, Tonka has shown that MUSICOPOLY is deceptively similar to the marks MONOPOLY and ANTI-MONOPOLY as registered under trade marks A69538(28) A409390(28) A404491(28) and A419262(28), and thus makes good its opposition founded upon section 33.

Turning now to Tonka's trade mark A457536, OPOLY, and the effect of section 33. Mr Christiansen mentions the fact that this trade mark is subject to section 23 action. The trade mark is at present, however, a valid registration and the existence of an un-resolved removal action is not something I can take into account.

In relation to Tonka's OPOLY trade mark I believe the opponent has again successfully made out its case.

Applying the directives of the Bubble Up case (supra), the suffix -opoly by virtue of its rare occurrence as a suffix, and its distinctive characteristics as a trade mark in respect of board games, must be seen as a significant part of the applicant's trade mark A488032.Despite the many and various other components in this composite trade mark, the word MUSICOPOLY is a major element.  In that word both the prefix music- and the suffix  -opoly retain their respective identity.  As a suffix -opoly maintains the same sound.  As to meaning,  dictionary definitions are not here of great assistance.    However, the prominence of  OPOLY  in the three words monopoly, duopoly and (to a lesser extent) oligopoly  confers a significance which is clearly evident in the word MUSICOPOLY. OPOLYdoes not merge into the whole word MUSICOPOLY, nor are its distinct appearance, sound and relevance lost.  On the contrary, I find that OPOLY constitutes a singular and distinctive part of the word MUSICOPOLY and consequently a significant element in the application mark.  

On the basis of the opponent's registered trade mark OPOLY per the directives of Justice King  (see Bubble Up case, supra) I find again that the opponent succeeds by way of the section 33 ground.

Section 28

Turning to the directives of the Southern Cross Refrigerating Company v. Toowoomba Foundry Proprietary Limited, (1954) 91 CLR 592, Mr Caine submitted that by demonstrating that persons would wonder whether MUSICOPOLY games and MONOPOLY games came from the same source, Tonka must succeed on its section 28 ground. He continued, however, with argument that Mr Chong's application to obtain exclusive rights in the work MUSICOPOLY indicates a deliberate attempt to seduce part of Tonka's goodwill.    Mr Caine said that the evidence overall established a compelling inference that the trade mark MUSICOPOLY was a copy inspired by the MONOPOLY group of marks.  The applicant had not offered any other explanation of authorship or invention.  Consequently, Mr Caine submitted,  I should treat Mr Chong as a copyist and deal with this application as per the directives of Australian Woollen Mills Ltd. v F.S.Walton and Co. Ltd., (1937) 58 CLR 641 at 657 viz:

...if a mark ... is adopted  for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse........ and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether  what he has done is in fact likely  to deceive.  Moreover he can blame no one but himself...

Discussion re the section 28 grounds

The directives of the Southern Cross case relied on by Mr Caine (above) arose in relation to section 114 of the 1905 Trade Marks Act. This section reads

114     No scandalous design, and no mark the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice, of the use of which would be contrary to law or morality, shall be used or registered as a trade mark or part of a trade mark

Under the present Act, the equivalent is section 28 and it reads

28       A mark -
(a)       the use of which would be likely to deceive or cause confusion;
(b)       the use of which would be contrary to law;
(c)       which comprises or contains scandalous matter; or
(d)       which would otherwise be not entitled to protection in a court of justice,
shall not be registered as a trade mark.

The operation of section 28 has, however, been addressed in a number of recent cases, and notably in New South Wales Dairy Corporation v Murray Goulburn Co-operative Ltd 18 IPR 385, and it has been found to operate differently from section 114 of the 1905 Act..  The Court affirmed in  New South Wales Dairy Corporation v Murray Goulburn Co-operative Ltd that the application of paragraph 28(a) is limited by a requirement of blameworthy conduct on the part of the applicant for the mark  in suit. A Practice Notice published in the Official Journal, 19 September 1991,  reads:

Although the Court left the question  of what constitutes blameworthy conduct unclear it seems that by a bare majority the Court would have favoured the view that blameworthy conduct could be equated with conduct which would render a mark disentitled to protection in a court of justice.

The position in respect of the section 28 ground is, therefore, that when an opponent claims that in relation to other marks the applicant's mark is likely to deceive or cause confusion, that opposition will only succeed if two conditions are met - the opponent first must show that deception and confusion are likely; and second must establish that the applicant's mark is otherwise not entitled to protection in a court of justice.

I have found that MUSICOPOLY is deceptively similar to five of the opponents registered trade marks and that in the face of those marks  MUSICOPOLY is likely to give rise to deception and confusion. The conditions imposed by sub-section 28(a) are therefore met.

However, the second condition, as per sub-paragraph 28(d), has not been met.   Mr Caine submitted quite forcefully that the applicant has set out to copy the MONOPOLY style with an intention to capture some of the goodwill associated with the MONOPOLY family of marks.    I find, however, that these allegations amount to no more than an expression of opinion.  They certainly do not establish any  dishonesty (as per the Australian Woollen Mills, supra) and to my mind fall well short of showing blameworthy action.   

In accordance with the directives of the New South Wales Dairy Corp case (supra) I therefore dismiss the opposition as far as it relies on section 28.

Decision

The opposition as it relies on the terms of section 28 is dismissed. 

The opponent has established that in the face of its registered trade marks MONOPOLY, ANTI-MONOPOLY and OPOLY,   MUSICOPOLY is likely to give rise to deception and confusion and that therefore the applicant's trade mark is deceptively similar to the opponent's registrations.  The onus to dispel these findings lies with the applicant but has not been discharged.  The MUSICOPOLY trade mark consequently fails to qualify for registration under the terms of section 33.

Accordingly, I refuse to register trade mark application number A488032 and allow the opposition on the ground that this mark is deceptively similar to registered trade marks A69538, A409390, A404491, A419262 and A457536 and fails to qualify for registration in terms of section 33 of the Act.

Outcome

Mr Caine argued for costs, and I was not shown any reason why, as per the norm, the costs should not follow the decision.  I therefore award costs to Tonka.  They will be taxed and certified by an officer of the Trade Marks Office appointed for that purpose.  

Helen R. Hardie

Assistant Registrar

5 April 1994