Alan Chong v Tonka Corporation

This matter concerned an opposition by Tonka Corporation to the registration of the trade mark application number A488032, MUSICOPOLY, filed by Alan Chong for a music game in class 28. Tonka Corporation, based in the United States, opposed the application on grounds including sections 33 and 28 of the Trade Marks Act. The opposition proceeded to a hearing before a delegate of the Registrar of Trade Marks after the applicant, Mr. Chong, did not withdraw the application as indicated.

The delegate was required to determine whether the MUSICOPOLY trade mark was deceptively similar to any of Tonka Corporation's registered trade marks, specifically concerning the grounds under section 33 of the Act. Additionally, the delegate had to consider whether the application for MUSICOPOLY was disentitled to registration under section 28 of the Act, which encompasses grounds such as being likely to deceive or cause confusion, or otherwise not being entitled to protection in a court of justice. The court was also tasked with assessing the reputation of Tonka's existing trade marks, particularly the MONOPOLY mark, and its family of related marks.

The delegate reasoned that the onus was on Tonka Corporation to establish a likelihood of deception or confusion. Applying the principles of deceptive similarity, the delegate found that the suffix "-opoly" in MUSICOPOLY bore a significant resemblance to Tonka's registered marks MONOPOLY and ANTI-MONOPOLY, especially given the established reputation of MONOPOLY as a household word and the scarcity of words containing the "-opoly" suffix. This similarity, combined with the overlap in goods, was deemed likely to cause confusion as to the trade origin of the goods, thus satisfying the requirements of section 33. The delegate also considered the mark OPOLY, finding that it too constituted a significant and distinctive part of MUSICOPOLY, leading to a similar conclusion under section 33. However, regarding the section 28 ground, while deception and confusion were found likely, the delegate determined that Tonka had not established the necessary blameworthy conduct on the part of the applicant, as required by recent case law, to warrant refusal under section 28.

Consequently, the opposition was upheld on the grounds of section 33 of the Trade Marks Act, and the registration of the MUSICOPOLY trade mark was refused. The opposition based on section 28 was dismissed.