Hasbro Inc v Imagination Holdings Pty Ltd

This matter concerned an opposition by Hasbro Inc. to the registration of trade mark application number 937827 by Imagination Holdings Pty Ltd. The application sought to register the trade mark SLOTOPOLY in classes 9 and 41, relating to gaming and amusement apparatus, equipment, and services. Hasbro Inc. opposed the registration on the grounds that the proposed mark was deceptively similar to its registered trade marks, including MONOPOLY, ANTI-MONOPOLY, and MAKE YOUR OWN OPOLY, all of which were registered in class 28 for games and playthings. The fame and reputation of the MONOPOLY trade mark were not in dispute.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the applicant's proposed trade mark, SLOTOPOLY, was deceptively similar to the opponent's registered trade marks, particularly MONOPOLY, for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the visual, aural, and conceptual similarities between the marks, as well as consideration of the goods and services for which registration was sought and the opponent's registered rights.

The delegate found that the trade mark MONOPOLY was well-known and had a significant reputation. In assessing deceptive similarity, the delegate considered the common element "OPOLY" in both the opponent's marks and the applicant's proposed mark. While acknowledging that "OPOLY" might be descriptive in some contexts, the delegate concluded that in combination with the prefix "SLOT" in SLOTOPOLY, the overall impression created was one of deceptive similarity to the MONOPOLY trade mark. The delegate reasoned that consumers encountering SLOTOPOLY in relation to gaming machines and services would likely associate it with the well-established MONOPOLY brand, potentially leading to confusion as to the origin of the goods or services.

Consequently, the delegate refused to register the trade mark application number 937827. As the opponent was successful in its opposition, it was awarded its costs on the official scale against the applicant.