OHIM – October 20, 2009- VINOPOLY / MONOPOLY
On October 20, 2009, the Opposition Division of the OHIM upheld that the Community trademark application for VINOPOLY was confusingly similar with the earlier mark MONOPOLY. The signs coincided in the sequence -NOPOLY which made six letters shared out of eight. Aurally, the signs had the same rhythm and intonation regardless of their difference in the first syllable. Conceptually, the OHIM pointed out that the contested application had no meaning while the opposed trademark meant “the exclusive possession or control of the trade in a commodity, product or service; the condition of having no competitor in one’s trade or business”.
The Examiner gave note to the applicant’s argument that the common part “POLY” is frequently used in combination with other elements in the field of games but pointed out that in most cases POLY is placed at the beginning of the signs and not at the end.
The OHIM erred in our view when dealing with the conceptual aspect of MONOPOLY. The clear and immediate meaning attached to it should have weighted more in the comparison of the signs. Part of the Community case law gives prevalence to the conceptual level of comparison and we see no reason why for no proceeding similarly in here.
The MONOPOLY sign indeed has an inherent and particular enhanced distinctiveness. This should have been taken more into consideration with a possible “boomerang” situation (the public could have been regarded as all the more in a position to properly differentiate MONOPOLY and VINOPOLY without risking to confuse the marks).