TRADE MARKS ACT 1995 DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS Re: Opposition by Hasbro Inc to registration of trade mark application 937827(28)(41) LIVE-OPOLY filed in the name of Imagination Holdings Pty Ltd.
Ian Thompson Opponent Ron Webb of Counsel instructed by June Savage of Baker &McKenzie. Applicant Margaret Shearer of Banki Haddock Fiora. 1. Section 52 Opposition: sections 42, 43, 44 and 60 grounds of opposition established under sections 43, 44 and 60 2. Costs awarded against applicant.
DELEGATE: REPRESENTATION:

DECISION:

Background 1. Imagination Holdings Pty Ltd., ('the applicant') of Kent Town, South Australia, has filed application to register a trade mark, current details of which are:
App No: Priority Date: Goods/Services:

Trade Mark: 2.

December 2002 Class 28: Toys, games and playthings; board games; computer and video games; all included in class 28 Class: 41 Entertainment and education services in the form of television and radio programs; entertainment and education services provided online or over the Internet; live events LIVE-OPOLY
No grounds for rejection under the Trade Marks Act 1995 ('the Act') were raised against the application during examination and it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks, on 22 May 2003.
[2] 3. On 14 July 2003, Hasbro Inc of Rhode Island, USA, ('the opponent') filed Notice of Opposition (the Notice) to registration of the trade mark. The Notice cites most grounds available under the Act of these the opponent relied on grounds under sections 42, 43, 44 and 60 at the hearing. 4. The parties have served and filed evidence in support and evidence in answer in accordance with the Act and regulations thereto. 5. The hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 20 July 2005. Ron Webb of Counsel, instructed by June Savage of Baker & McKenzie, represented the opponent; and Margaret Shearer of Banki Haddock Fiora represented the applicant. Evidence Evidence in support 6. The evidence in support of the opposition comprises statutory declarations by Paul Normand Vanasse and Amanda Blackhall. 7. Mr Vannasse is Director of Intellectual Properties of the opponent and his declaration is made from an American and international perspective. He states that the opponent manufactures and sells the worlds most popular board game, MONOPOLY. The opponent also owns the trade mark MONOPOLY by virtue of the merger of Tonka, Inc., the parent of Parker Brothers, Inc, into Hasbro on 1 January 1996. 8. The fame and reputation of the MONOPOLY trade mark is not in dispute in these proceedings I will, however, give some indication of the history of the trade marks and indications of its fame to support my reasons and decision in this matter.
[3] 9. Mr Vannasse sets out a history of Parker Brothers adoption of the game in 1935 it was sold to them by a Mr Charles Darrow. The object of the game is familiar to most people it is to win and develop properties, create wealth, amass a play fortune and (by bankrupting ones fellow players) win the game. 10. The game is sold around the world in numerous editions with property names tailored for the major countries in which the game is sold for instance, MONOPOLY games sold in South American countries have property names appropriate to those countries. There are editions sold in Braille and others sold to specific interest groups. 11. As well as the board game, the opponent produces, or has licensed, other goods bearing the MONOPOLY trade mark including a card game, a Sony Playstation game, a Nintendo 64 game, a CD-ROM, hand held electronic games and a three dimensional puzzle. The MONOPOLY trade mark is also licensed to be used on poker machines. 12. In addition, the opponent licenses, or has licensed, the use of the MONOPOLY trade mark on a range of goods including clothing, footwear, mugs, glasses, dishes, toothbrush holders, soap dishes, blankets, toys, watches, jewelry, desk accessories, confectionery, Christmas tree ornaments and picture frames. 13. It is not clear from this declaration which, if any, of these latter goods have been sold in Australia. 14. Mr Vanasse also attests to print and electronic media advertising of the opponents MONOPOLY game however, again, it is not clear from this declaration to what extent the goods have been advertised in Australia, or to what extent the opponents websites have been accessed from Australia.

[4] 15. There are sales and advertising figures appended to this declaration from the USA, Canada and the UK. These are considerable. 16. The MONOPOLY trade mark is registered by the opponent in most countries around the world, including Australia. Details of its Australian registrations relevant to these reasons and decision are: Reg Number Priority date: Goods/Services: Trade Mark: Reg Number Priority date: Goods/Services: January 1937 Class: 28 Games of chance and/or skill MONOPOLY February 1984 Class: 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 ANTI-MONOPOLY June 1998 Class: 28 Games and playthings including board games MAKE YOUR OWN OPOLY October 1998 Class: 9 Gaming, amusement and entertainment apparatus and equipment in this class including coin operated machines, poker machines, slot machines, gaming machines having video screen displays and wide area progressive gaming machines, computer software and parts, fittings and accessories in this class for all the aforesaid goods Class: 41 Entertainment services relating to gaming and gambling; provision of gaming equipment and machines; conducting gaming services associated with wide area progressive gaming machines SLOTOPOLY
Trade Mark: Reg Number Priority date: Goods/Services: Trade Mark: Reg Number Priority date: Goods/Services:

Trade Mark:

17. Some indication of both the MONOPOLY games pervasiveness and notoriety is illustrated by the following facts: Parker Brothers, at the request of NASA, designed
[5] MONOPOLY games to be played in space by astronauts. The (English) Great Train Robbers in 1967 played a game of MONOPOLY shortly after the robbery with real money. In 1972, outrage expressed by MONOPOLY players forced a back-down by city officials who proposed a change of street names in Atlantic City. The largest game of MONOPOLY took place in 1987 when American students commandeered a city block within the college campus. There have been over five billion little green houses built since 1935. The Guinness Book of Records estimates that there are 500 million games of MONOPOLY played each year making it the worlds most played board game. 18. Amanda Blackhall is Product Manager, Games and Puzzles of Hasbro Australia Pty Limited, (HAPL), a licensee of the opponent and makes her declaration from an Australian perspective. The following facts emerge from her declaration. 19. The game of MONOPOLY was, according to this declaration, first sold in Australia by the opponent in the 1950s (although I note that the Musicopoly decision, below, gives a date in the 1940s). Ms Blackhall gives revenue figures derived from the sale of the opponents monopoly board games in Australia these are substantial. 20. There is an Australian edition of the MONOPOLY game which features Australian street names such as Macquarie Street and Pitt Street, and which has a koala as one of the tokens. As well as the British and Australian editions which have been sold in Australia, the opponent has sold an Australian Rules Football League Edition which features football teams instead of streets. 21. Other editions of the opponents MONOPOLY game which are, or have been, recently sold in Australia by the opponent include the Junior, Junior Toy Story, Simpsons, Disney, Nostalia, World Cup, Manchester United, Star Wars, Star Wars Episode One,

[6] Millennium, AFL, Money, Pokemon, Pokemon Gold and Silver, and Stock Exchange. A number of specialty stores also import overseas editions of the opponents MONOPOLY game into Australia and sell them. These games include the following editions of the opponents MONOPOLY game: the Garfield 25th Anniversary, Justice League of America, Muppets, Peanuts, Scooby-Doo, Simpsons, Spider-Man, Astronomy, Aviation, Betty Boop, Cola-Cola, Corvette, Elvis 25th Anniversary, Ford 100th Anniversary, I Love Lucy, Mountaineering, National Parks, Dog Artist, Wizard of Oz, X-Men, Las Vegas, New York City, Golf, Harley-Davidson and US Space Program. 22. Other products that are made or licensed for sale in Australia by the opponent under the MONOPOLY trade mark include a card game, computer games for PC, a new edition game for PC, Junior game for PC, a tycoon game for PC, as well as editions for handheld games controllers. 23. HAPL has extensively advertised and promoted goods sold under the trade mark in Australia, examples of advertisements in print and electronic media are appended to Ms Blackhalls declaration. HAPL also displays goods sold under the trade mark at trade fairs and organizes the Australian heats of the World Monopoly Championships at which Australia has been represented since 1980. HAPL organizes a media blitz in relation to this competition, when it occurs, in Australia. 24. The opponent and HAPL license use of the MONOPOLY trade mark in Australia by other entities to cross promote their goods or services; such entities have in the past included the ANZ Bank, McDonalds Restaurants, the ATO, Raine & Horne Canberra (a real estate agency), the Sydney Morning Herald, Bon Bon Buddies, The Franklin Mint, Scratch Lotteries through Oberthur Gaming Technologies, WMS Gaming
[7] poker machines, and WT Wilson Desk Accessories. The declarant appends
confidential details of substantial revenue derived from licensing use of the trade mark to these other entities. 25. Current licensing to third party traders include: educational books, Atari games, a Gold Coast edition of the game, mortgage promotions, banks promotions, boxer shorts, a food promotion and real estate. 26. Ms Blackhall attests that companies related to the applicant and opponent recently had a licensing agreement concerning the use of the trade mark MONOPOLY South Australian Charity Edition however, this feature of the evidence was not strongly pushed at the hearing; the whole of the agreement is not in evidence; and, as far as the agreement is concerned, there are obvious problems with privity in as far as it might possibly relate to the parties before me. As far as it might relate to the good faith of the applicant, this evidence is not relevant. Evidence in Answer 27. Shane Yeend is CEO of Imagination Entertainment Pty Ltd and Director and Secretary of Imagination Holdings Pty Ltd. The following facts relevant to these reasons are derived from his declaration. 28. The opponents trade mark MONOPOLY is used by the opponent and its licensees in a very stable way. The opponent has a style guide which is used by it and its licensees to ensure that word MONOPOLY and the symbols connected with the game are used uniformly and consistently throughout the world. 29. Material exhibited to the Yeend declaration suggests that the game evolved from one called The Land-Lords Game in the public domain in the second decade of the 20th

[8] century within the United States of America and evolved into games which went by the names of MONOPOLY and FINANCE. Charles Darrow was introduced to the
MONOPOLY game in the early 1930s and sold it to Parker Brothers in 1935.1 30. There are, in the United States, avers Mr Yeend, many other -OPOLY suffixed games produced by other traders, which co-exist with the MONOPOLY trade mark of the opponent. Material appended to the declaration shows that others, apart from the opponent, market OPOLY suffixed games in the United States and Canada with one trader, Late for Sky Productions, Inc., which sells games based on 11 cities and 78 universities within the United States. 31. Mr Yeend lists some 104 Opoly suffixed games which are available via the Internet and thus could be purchased by the public in Australia. There is no evidence that such purchases have occurred and I think that it is unlikely that many of the Australian public would purchase games which are obviously designed with other specialty purchasers in mind, such as Arizonopoly, Irishopoly or NBA-opoly which occur in the list of games in Mr Yeends evidence. 32. At least four specialty games stores in Australia sell American OPOLY suffixed games (ie Kiss-opoly, Mowntownopoly and Cat-in-the-Hat Opoly) which are unconnected with the opponents MONOPOLY trade mark. 33. There are 15 trade mark applications or registrations of trade marks in the United States which include the suffix opoly which belong to persons other than the opponent.
Anti-Monopoly Inc v General Mills Fun Group Inc No 81-4281, Supreme Court of the USA.
[9] Observations 34. I consider that Mr Yeends evidence about the history of the opponents trade mark in the United States and Canada (and the suffix Opolys consequent generic nature in those countries) has little or no application in the matter before me. There is no evidence that the games of Land-Lord, FINANCE or MONOPOLY were ever in the public domain in Australia. Further, the wide range of OPOLY games generally available in the United States and Canada are not generally widespread and available for immediate purchase in Australia. Consequently, any conclusion that the Australian public has been habituated to regard the suffix OPOLY as being generic would be unsound particularly when the weight of the evidence tends to the opposite conclusion. Caution needs to be exercised in extrapolating from the American market to that in Australia in the consideration of what is, and what is not, a generic. For example, the words Yellow Pages are regarded as generic within the United States in respect of telephone directories but yet are a registered trade mark in Australia2 because of the differing ways that trade has evolved in the respective countries.3 35. Similar caution should be exercised concerning any notional transfer to Australia of the habituation of the public within the United States and Canada to the number of OPOLY games in the marketplace in the names of different traders. There is very limited evidence that the Australian public is similarly habituated and the other games which incorporate the suffix OPOLY are few and sold through a very limited number of specialist retailers to what is, as a consequence, a very limited market.

See for example, Australian trade mark registration No. 820729 in the name of Telstra Corporation. And see, for example, the similar issues in the line of cases such as Apand Pty Limited v. The Kettle Chip Company Pty Limited (1994) ATPR 41-353 (1994) 30 IPR 337
[10] 36. Without evidence that Internet sales of other traders OPOLY suffixed games have occurred into Australia, the fact that such trade marks are on the Internet does not lead to a conclusion that they have been used in Australia. A trade mark is a sign that is used in trade (or intended to be used, via an application for trade mark registration) it follows that without evidence of use or intended use in trade under that trade mark in Australia, it does not qualify to be considered as such under the statutory definition.4 An exception to this rule is found where a foreign trade mark has built a reputation within Australia: ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302. However, there is no evidence of weight that the North American OPOLY suffixed trade marks have, individually or collectively, established a reputation in Australia. Issues 37. As it is not alleged that the trade marks are substantially identical, the nub of this matter lies in questions of the deceptive similarity (in terms of sections 44 and 60) of the trade marks or whether the use of the opposed trade mark by the applicant would mislead or deceive: (In considering grounds under section 42(b), argued at the hearing, I must consider whether the use of the opposed trade mark would trigger section 52 of the Trade Practices Act 1992). The remaining ground, which I will address first, lies within section 43 and is whether, because of a connotation within the opposed trade mark, it would in use confuse or deceive.

17 What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
[11] Section 43 38. Section 43 of the Act provides: 43 Trade mark likely to deceive or cause confusion An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion. 39. By the language of section 43, my considerations of the issues involved are limited to connotations arising from the opposed trade mark itself and not through similarities to another trade mark. This approach has been affirmed by the Court in Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521: The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43. 40. The question is, hence: given the connotations (if any) in the trade mark LIVEOPOLY, would the use of the opposed trade mark in relation to the nominated goods and services by the applicant be likely to deceive or confuse? 41. The trade mark LIVE-OPOLY, considered as a whole, has, as Ms Shearer observed at the hearing, no ascribable meaning. However, the suffix -OPOLY, is contained within the trade mark as a distinct element and it is this, argues Mr Webb, which gives rise to the connotation. 42. The trade mark MONOPOLY has passed into language; it is contained in Collins English Dictionary (1981): n Trademark a board game for two to six players who throw dice to advance their tokens around a board, the object being to acquire the property on which their tokens land.

[12] 43. The Macquarie Dictionary supplies: noun a game played with counters, cards, etc., with the object of one player gaining monopoly controls over the others. [trademark] 44. However, the question which confronts me is whether the element OPOLY itself has a connotation. The word MONOPOLY is not contained in the opposed trade mark. 45. It is apparent that a sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles or signifies a particular sign which is so ubiquitous, of longstanding, or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular person, entity or event or connoting a particular meaning (whether or not that particular sign has trade mark significance). For example, a picture of the face of a woman who resembles the late Princess Diana, the Princess of Wales, is likely to contain a confusing or deceptive connotation within a trade mark proposed to be used for charitable fundraising. 46. It is clear that the opponents trade mark MONOPOLY has entered Australian parlance. It is a word (albeit with noted trade mark origins) found within dictionaries which are published within Australia. It is possible, hence, to examine the suffix OPOLY in the context of the opposed trade mark, and in the context that it is proposed to be used in relation to games, and pose the question whether it connotes, to Australians, the word MONOPOLY. 47. And, it is relevant to note here that, as MONOPOLY (in the sense that it refers to the opponents game) is a word in dictionaries and language, whatever rules are contained in the opponents Style-Guide binding it or its licensees as to the commercial use of the word do not apply in this public use.
[13] 48. In my estimation, the element OPOLY within the opposed trade mark will connote to most Australians that the applicants game is one that is similar to the opponents game because (in the context of the nominated goods and services) the word MONOPOLY is the word which instantly impresses itself as the only logical and immediate start point for recognition of the significance of the OPOLY suffix within the opposed trade mark. This is not necessarily confusing or deceptive in itself if there is a genus of OPOLY suffixed property games which are widely known by Australians to immediately negate or dispel any misapprehension, mistake or wonderment. In that sense, and if the suffix OPOLY were to only connote a genus of games, the connotation of the OPOLY suffix would only be deceptive or confusing if the applicants goods and services were not a property game. 49. I think that the problem for the applicant is that, to most Australians, in the context of the nominated goods, the only game that the suffix OPOLY could connote is the MONOPOLY game of the opponent. In that the suffix OPOLY, within the opposed trade mark, is confusing rather than deceptive because most Australians will initially be caused to wonder whether the opponent is marketing, or has licensed, a variant on its game (or that in some way the opposed trade mark should be related to the opponents MONOPOLY games or activities). Explaining the differences between deception and confusion, Richards J in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd. [1979] RPC 410 at 423 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.

[14] 50. And in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at paragraph 47 French J says: The policy of the 1995 Act can be said to some extent to have shifted the balance of the objectives of trade mark law more towards the identification and protection of commercial products and services than the protection of consumers, although the latter remains an objective. In respect of deceptive trade marks the interests of consumers are also protected by comprehensive Federal and State laws relating to conduct which is misleading or deceptive or likely to mislead or deceive. The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes. That, no doubt, is because "confusion" used in that sense, does not of itself lead into error or affect choices at the point of sale. It is perhaps best described in trade mark law as effecting a prophylactic support for commercial distinctiveness. 51. The distinctions here are fine ones, but the connotation within the opposed trade mark is such that the connection in the minds of the Australian public is, in my estimation of the evidence before me, immediate and inevitable with inescapable consequences of confusion as an outcome. This may not persist to the point of sale or lead into error, but the likelihood of an immediate wonderment as to a common commercial origin is, in my consideration of the evidence, unavoidable. 52. The opponent has established its opposition under section 43 to my satisfaction. Sections 44 and 60 53. As the application is made in respect of goods and services, both subsections 44(1) and (2) are relevant. 54. Section 44(1) of the Trade Marks Act 1995 provides: 44 Identical etc. trade marks (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicants trade mark) in respect of goods (applicants goods) must be rejected if: (a) the applicants trade mark is substantially identical with, or deceptively similar to:
[15] (i) a trade mark registered by another person in respect of similar goods or closely related services; or (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and (b) the priority date for the registration of the applicants trade mark in respect of the applicants goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10. Note 2: For similar goods see subsection 14(1). Note 3: For priority date see section 12.
55. Section 44(2) provides similarly for an application made in respect of services. 56. Section 60 of the Act provides: 60 Trade mark similar to trade mark that has acquired a reputation in Australia The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the firstmentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1: For deceptively similar see section 10. Note 2: For priority date see section 12.
57. The parties, in their submissions, both directed me to the relevant case-law and presented me with good and cogent argument to support their respective positions. Ultimately, the start point is at section 10(1) which defines the expression deceptively similar which is common to both sections 44 and 60: 10 Definition of deceptively similar For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
[16] 58. Given the similarities of the goods and services, the reputation of the opponents trade mark and the priority dates of the opponents registrations5 (which predate that of this application), the question ultimately resolves itself to one concerning the similarity of the trade marks of the parties: are they deceptively similar? 59. The test for deceptive similarity was posited thus by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415: On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. 60. And as expressed by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 at page 658: In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. 61. What I am to consider is not only the similarity, if any, between the trade marks. What I am to consider is the effect of the similarity in all of the circumstances according to the particular trade and the potential buyers of the goods and my estimate of their perceptions of the world. Lord Parker (then Parker J) put this aspect of the

consideration thus in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where he said:
See list under the heading Evidence
[17] You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case. 62. A further decision brought to my attention by the opponent in this matter is that of the Deputy Registrar, Mrs Hardie, in Alan Chong v Tonka Corporation [1994] ATMO 27 (5 April 1994). That case proceeded under the Trade Marks Act 1955, (the 1955 Act) the precursor of the current Act. In opposition proceedings under the 1955 Act, the onus was on the applicant to show that the trade mark was not likely to confuse or deceive. However, as observed by Mrs Hardie in her decision: 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. 63. The level of the high bar thus remains at the same level as regards deceptive similarity and the likelihood of deception and confusion albeit the way in which it is approached as regards onus has obviously changed. 64. However Mrs Hardie concluded that MUSICOPOLY and the MONOPOLY group of trade marks are deceptively similar and I believe that the outcome under the current Act should be the same. I have reached the same conclusion about the opposed trade mark LIVE-OPOLY and the opponents MONOPOLY group of trade marks which comprise MONOPOLY, MAKE YOUR OWN OPOLY, ANTI-MONOPOLY and SLOTOPOLY, albeit for slightly wider reasons, which I will now explain.
[18] 65. In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539, the Full Bench of the Federal Court said: His Honour's reference to the familiarity of the name `Woolworths' in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as in the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name `Woolworths' cannot be assessed without a recognition of its notorious familiarity to consumers." Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further. 66. It would, in this matter, be unrealistic to avoid the consideration of the notoriety and connotation of the word MONOPOLY in the comparison of the trade marks for the purposes of section 44 and 60. The applicants evidence tends to somewhat colorfully paint the opponent as being a huge trader that is prepared to sit on smaller traders such factors, of course, do not have a part in the consideration of whether the trade marks in question are deceptively similar and it is perhaps inevitable that some of the trade marks of major traders have gained a notoriety which they are at pains to protect.

[19] 67. It is the applicants thesis that the element OPOLY in the opposed trade mark indicates a genus of property games. The use of this element in the context of such goods is (or should be), the argument goes, open to all as it does not indicate the goods of any particular trader. 68. However, the evidence which goes to support this thesis relates, in the main, to the marketplace in the United States of America and in Canada. There is very limited evidence before me of three games which incorporate the suffix OPOLY other than those of the opponent available through some four specialist retailers within Australia and no evidence of whether these games have actually been sold and, if so, the level of such sales. There is, on the other hand, evidence of the opponents substantial sales of its many different MONOPOLY trade marked games and of recognition of its trade mark in Australian dictionaries. There is also evidence of the opponents maintenance of its monopoly in games which include the suffix OPOLY in Australia via oppositions such as the Musicopoly opposition, above, and its licensing of non-core OPOLY suffixed trade marks (such as SLOTOPOLY and ANTI-MONOPOLY) to third parties. 69. Such third party usage, through authorized user agreements is, of course, use by the owner of the trade marks6 and the argument that such trade marks have been acquired through aggressive opposition actions is of no relevance. The prior owners of these trade marks have recognized a business and marketplace verity and, subsequently, the opponents ownership of the trade marks. The opponent has, effectively, built a family of trade marks in Australia in much the same way as the players of its games acquire groups of related properties and with similar outcomes or consequences.
See subsection 7(3) and section 8 of the Act
[20] 70. Additionally, the opponent has extensively licensed its MONOPOLY trade mark to others in cross promotions by such traders as banks, fast food restaurants and real estate agents. 71. And, of course, as discussed above, MONOPOLY is a dictionary word as connoting the game of the opponent and there are few other words which have the suffix OPOLY. The words oligopoly and duopoly are not in common use, as is the word monopoly which is familiar to most people. While the word MONOPOLY, both in its trade mark and ordinary meanings, might refer to an outcome of the game, it is one which in the context of the relevant goods and services is associated in the minds of Australians with the opponents game and hence its trade marks. 72. The evidence of the parties thus shows that the Australian public has not been habituated to the element OPOLY as being generic and indicating a property game. There is a recognition factor at work here in that most people in Australia on first seeing the opposed trade mark will immediately perceive it as somehow referring to the opponents game and, hence, trade mark. 73. I believe, as a consequence, that the suffix OPOLY in the opposed trade mark will lead most potential purchasers in Australia to an immediate and inevitable conclusion that the opposed trade mark must have some form of connection with the opponents MONOPOLY game and thus with the opponent. 74. As I have observed, it is probable that the opposed trade mark was coined specifically to refer to property games of the type marketed by the opponent in Australia rather than to the trade mark MONOPOLY. The problem for the applicant is that, in my estimation, in Australia the OPOLY suffix in the context of the nominated goods and services is so immediately connected with the opponents game and its MONOPOLY

[21] trade mark as to be likely to suggest to most people that the opposed trade mark must be connected in some way with the opponent. 75. If the species of deception or confusion here were to be categorized, it would be akin to that in In Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 as being a contextual confusion. I have already referred to the differences between confusion and deception discussed by Richards J in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd, above. 76. The likelihood of confusion is, in my estimation, immediate and palpable. 77. I am satisfied that the opponent has established its opposition under section 44 and 60 as the opposed trade mark is deceptively similar to the opponents trade marks. Section 42 78. As the opponent has established its opposition under sections 44 and 60, there is no need for me to consider the opposition under this ground. However, I will observe that, as I have concluded that the trade marks would confuse rather than deceive, the use of the opposed trade mark would, consistently with these reasons, not be contrary to the law in section 52 of the Trade Practices Act 1972 in which the words likely to mislead or deceive are used. As observed by French J., in Woolworths, above, the trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes. Confusion, in this sense, is a concept not caught by the words likely to mislead or deceive. Conclusion 79. Section 55 of the Act provides:
[22] 55 Decision Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide: (a) to refuse to register the trade mark; or (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
80. I refuse to register application 937827. 81. The opponent, having been successful, is entitled to its costs which I order at the official scale against the applicant.
Ian Thompson Hearing Officer Trade Marks Hearings 12 August 2005

$3B (E) (Private) VICTORIA PICCA, SVP, LICENSING AND BUSINESS AFFAIRS, +1.212.407.8000
Key licensing properties include NBA, WNBA, NBA Development League and USA Basketball. With the start of every new season, the NBA introduces new uniforms and new products. To celebrate the Los Angeles Lakers 15th championship, NBA unveiled a line of commemorative merchandise. The line was highlighted by an Adidas anniversary jacket, which featured 15 individual patches each one representing a championship year. The Lakers wore the jacket on-court opening night when the team received their championship rings. The collection was sold at Champs Sports, NBA Store on Fifth Avenue and NBAStore.com. Other new products include the launch of new trading cards from the NBAs new exclusive trading card partner, Panini, and the launch of a new trading card game called Adrenalyn. On Christmas Day, the NBA debuted the NBA Adidas game time shooting shirt that was worn by all players who participated in the Christmas Day games. This item was the first on-court item to be player identified other than the jersey. The Game Time Shooting Shirt will be worn throughout the 2009-10 season and is a new staple to the NBA on-court uniform apparel collection. NBA, adidas and athletic retailer Champs Sports teamed up to dedicate official NBA shops inside Champs Sports stores that will include a broader selection of NBA jerseys, on-court apparel and fashion collections, as well as shooting shirts, shorts, hats and track jackets. The shops will roll out in 69 stores this month in key NBA markets including Miami, Orlando, Boston, Chicago, Cleveland, Dallas, Houston, Los Angeles, Portland and San Antonio. All 486 Champs Sports stores will have NBA shops by the start of the 2010-11 season.

HIT 20 ENTERTAINMENT

$2.7B (Private) PETER BYRNE, EVP CONSUMER PRODUCTS AND HOME ENTERTAINMENT, , INTERNATIONAL, +554 2500; PAM WESTMAN, EVP CONSUMER , PRODUCTS AND HOME ENTERTAINMENT, THE AMERICAS, +1.212.463.9623
In 2009, Thomas & Friends ranked as the No. 1 license in the preschool toys category in the U.S., according to The NPD Group and the No. 1 preschool toy property in other countries, including the U.K. and Australia. Barney continues to be strong selling more than 132 million books and more than 80 million DVDs around the world. Barney will begin a new live stage show tour in North America in fall 2010. Bob the Builder celebrated its 10th anniversary in 2009 as a top-ranked home entertainment property, with strong retail programs around the world. TV favorite Fireman Sam moved to CGI in 2009 and signed with a number of new toy partners around the world. Book sales for Rainbow Magic have now exceeded more than 20 million units worldwide. In 2010, HIT celebrates Thomas & Friends 65th anniversary and unveils new lines from global master toy partner Fisher Price, Learning Curve and Mega Bloks. New Thomas & Friends content will launch on TV, DVD and online; themed live events will take place on four continents; and top-tier partners across retail and marketing will mark the exciting milestone with special celebratory activities. Angelina Ballerinas new CG-animated series, Angelina Ballerina The Next Steps, will roll out to more than 35 territories in 2010, along with a new Web site. Angelina will welcome new partners in toy and apparel and other categories. Angelina has a successful specialty program at FAO Schwarz and will roll out to mass in fall. New Fireman Sam product hits the shelves throughout 2010 to complement the new CG-animated TV series and feature-length DVD special. New Bob the Builder product will hit the shelves in 2010 and a new CG-animated TV series will launch around the world. A 60-minute DVD special is also pegged for release. The Little Big Club, comprising a selection of HITs most popular characters, is on tour in theaters across the world, including the U.K., Australia, Dubai and Abu Dhabi. Thomas & Friends was broadly supported at Walmart, Target, ToysRUs, Kmart, Sears and specialty in North America and ToysRUs, Smyths, Argos, Toymaster, Early Learning Centre and Hamleys in the U.K., as well as Mueller, ToyRUs and Spielemax in Germany. The Fat Controller Station Stops at Smyths in the U.K. drove a 20 percent increase in Thomas & Friends sales across the October 2009 school holiday, The ToysRUs Thomas & Friends Extravaganza was a huge success in the U.K. in autumn/winter 2009. Thomas & Friends playdates at ToysRUs took place across the U.S. over four Saturdays in 2009 and drove an increase in Thomas & Friends sales. Angelina Ballerina launched a specialty program at FAO Schwarz. The Angelina plush from Madame Alexander was a top 10 doll at the store in Q4. Bob the Builder was supported by toy retailers across the U.K., including a major month-long promotion at Hamleys celebrating his 10th anniversary and a ToysRUs autumn promotion. In the U.K., Fireman Sam enjoyed great support at retail leading up to the launch of Sams new product line this year. Over six weeks he also made character appearances and promotions at Smyths, which showed significant uplift in footfall and sales during June/ July 2009. March/April 2010 www.licensemag.com

Sesame Workshop

Ford continues to build its presence in these emerging markets, there are strong opportunities to offer licensed product to the brands new and loyal consumers. In 2010, the numerous new licensing partners added in 2009 across the apparel, toys and food categories will launch product, driving growth in various retail channels. In addition, Fords highly celebrated new global automobile launches, including the Fiesta and the Focus, will inspire new licensed products across categories. Ford licensed products continue to sell across all major channels of distribution, including mass, mid-tier, specialty, big-box stores, drug stores, convenience stores, catalog, online, trackside and in Ford dealerships. In 2009, the Ford program expanded with new retail programs, gaining presence with exclusive products at retailers including Old Navy, Walmart and JCPenney. The program will expand into new international retailers as new international licensees launch product in 2010.

Hilco Consumer Capital

$1.4B (Private) M. JEFFREY BRANMAN, MANAGING DIRECTOR; BEN NORTMAN, MANAGING DIRECTOR, +1.416.361.6336
A diverse portfolio of brands includes Halston, Ellen Tracy, Caribbean Joe in fashion; Tommy Armour and Ram in sports; Bombay and Linens n Things in home; Bob Marley in celebrities; and Sharper Image and Polaroid in consumer electronics. Formed in 2006, the brands reach consumers across multiple categories and tiers of retailing. Recent deals include the appointment of Lady Gaga as creative director for Polaroids line of imaging products.
$1.5B (private) MARK MADDEN, MANAGING DIRECTOR OF GLOBAL LICENSING, +1.818.379.7262
With the largest product segment in the Sunkist licensing portfolio being the fast-changing beverage category, success continues to be driven by new product lines, new f lavor ranges, conversion of existing brands to Sunkist and expansion of global territories of existing licensees. Sunkist also continues to pursue new licensee opportunities around the world. Sunkist-licensed products are available in more than 45 countries and the program has a 50-year history that includes 40 licensees in North America, Africa, Asia, Europe, Australia and the Middle East. The Sunkist brand can be found on products ranging from juice, soda and other fruit and citrus beverages to fruit snacks, confectionery items, baking mixes, ice cream, pistachios and vitamins.

Merchandising consists of extensive products, both from Martha Stewart and Chef Emeril Lagasse, which MSO acquired in 2008. A majority of the companys merchandise is exclusive to various retailers. Last October, MSO signed a deal with Age Group Ltd. to produce a line of pet care products, including apparel, collars, leashes, bedding grooming and toys exclusively for PetSmart. Other partnerships include: Martha Stewart Living home-improvement products at The Home Depot. The line launched in January 2009 and includes paint, home organization, home dcor. Martha Stewart Collection at Macys features a broad range of home products including bed and bath textiles, housewares, casual dinnerware, flatware and glassware, cookware and holiday dcor and Martha Stewart Crafts with EK Success is available at more than 900 Michaels arts and crafts stores, independent retailers and Walmart stores in the U.S. and Canada. MSO also has a co-branded flowers program with 1-800-FLOWERS.COM. MSO continues to expand the Lagasse brand, and in January announced a deal with Ion Television to distribute a new, hour-long primetime television series, called The Emeril Lagasse Show, which is scheduled to air on Sundays at 8 p.m. beginning in the spring.

Products

40 Sony Pictures Consumer
$1B (Public) GREG ECONOMOS, SENIOR VICE PRESIDENT, +1.310.244.4188
Key properties include: Ghostbusters, Smurfs, Surfs Up, Green Hornet, Cloudy with a Chance of Meatballs, Wheel of Fortune and Jeopardy. For 2010, release of several theatrical properties, including Karate Kid, Eat Pray Love, Green Hornet, Smurfs, Arthur Christmas and Hotel Transylvania. Key partnerships include all major mass and specialty retailers. March/April 2010 www.licensemag.com
Universal 41 Partnerships & Licensing
$1B (Public) AMY TAYLOR, SVP, +1.818.777.0276
In 2009, Universal combined its consumer products and promotions businesses to form Universal Partnerships and Licensing (UP&L). The new division delivers integrated media and merchandise programs for Universals properties while also identifying and securing key corporate alliances, including the Universal American Express Card from GE Money. In 2009, Curious George continued to be one of UP&Ls most successful properties supported by new content on PBS KIDS and Georges first holiday special, A Very Monkey Christmas, on DVD. In 2010, licensees, including I Can Do That! Games, Pressman Toys, JunkFood and SaraMax will expand their retail footprint while Universal continues to push new content, including the new full-length movie Follow That Monkey! coming to DVD in March. Key theatrical releases will drive the business in 2010 and 2011. Opening July 9, 2010, is Universal Pictures and Chris Meledandris Illumination Entertainments inaugural 3-D CGI feature Despicable Me. The film is the studios first from Meledandri (Ice Age, Ice Age 2: The Meltdown, Horton Hears a Who!). The promotional program includes some of the biggest partnerships in the studios history and the licensing program covers all key categories including video game, mobile, apparel, publishing and toys. Also in 2010, genre-smashing filmmaker Edgar Wright (Hot Fuzz, Shaun of the Dead) tells the amazing story of one romantic slackers quest to power up with love in Scott Pilgrim vs. the World, based on a series of award-winning graphic novels by Bryan Lee OMalley. Global game publisher Ubisoft is developing a downloadable video game that will launch worldwide with the films release. Blending state-of-the-art animation with live action, I Hop will debut from Universal Pictures and Illumination Entertainment in 2011, starring Russell Brand and James Marsden. Also on the 2011 slate is Fast Five with Vin Diesel and Paul Walker returning to star; the sci-fi thriller prequel to John Carpenters The Thing; and Cowboys & Aliens, a Dreamworks Studios and Universal Pictures co-production based on the graphic novel and directed by Jon Favreau.

46 Frigidaire

$850M (public) PHILIP RAIA, EVP, LMCA, +1.212.265.7474
LMCA has built the Frigidaire licensing program around key categories such as central air-conditioning and heating. Products are lauded for their technological sophistication and for being among the most energy efficient in the industry. Sales have consistently outpaced the industry.
47 World Wrestling Entertainment
$804.6M (Public) FLORENCE DI GIORGIO, VP of global licensing, +1.203.359.5136
The key properties include WWE and superstar logos, as well as TV show logos. Key initiatives include: Launch of comprehensive and multi-faced WWE Kids brand extension maintain hot priority markets such as France; continue to develop Mexico and the rest of Latin America; and leverage new global partnerships such as Mattel. Extensive retail partnerships and promotions: international-six-week kids meal program with 516 KFC restaurants in South Africa; five-week Champion of WrestleMania cross category nationwide promotion with Jet (420 doors) in South Africa; 13-week Champion of WrestleMania cross-category promotion in 186 Kmart stores in Australia and New Zealand; five-week Champion of WrestleMania promotion with Tesco. com in the U.K.; and cross-category promotion nationwide with Smyths in Ireland. In the U.S.: four-week cross-category WrestleMania Madness promotion in 1,350 Kmart stores, where consumers received $10 off the 25th anniversary of WrestleMania pay-per-view with the purchase of $50 in WWE merchandise; four-week cross-category promotion with ToysRUs for 25 years of WrestleMania excitement and also with TRU a SmackDown vs. Raw 2010 video game endcap; and Best Buy for Greatest Legend of WrestleMania, a four-month program with $10 off when purchasing two or more WWE items.

Kellwood

$800M E (Private) Brenda Palmer, vp of licensing, +1.212.329.8065
Kellwood designs, manufactures and markets a collection of fashion brands across a range of consumer lifestyles. Brands include Vince, Baby Phat, Jolt, SAG Harbor, Briggs NY and MyMichelle, as well as licensed brands, XOXO and David Meister. In mid 2009, Kellwood reached a deal allowing it to defer payment on $140 million in bonds, avoiding a potential bankruptcy filing. Kellwood operates Vince retail stores and Sag Harbor outlet stores across the United States. In January 2010, Kellwood acquired ISIS, an outdoor company focused on womens performance and casual apparel. The companys headquarters is in Chesterfield, Mo., and there are about 1,300 people employed at Kellwood.
$715M (PRIVATE) DEBRA JOESTER, PRESIDENT; JOANNE LORIA, EVP THE , JOESTER LORIA GROUP +1.212.683.5150 ,
Retail sales of Jeep consumer products exceeded $550 million in 2009 driven by luggage, strollers, footwear and dynamic growth in the expansion of Jeep retail stores. Two hundred new Jeep shop-in-shops opened in international markets, including Korea, China and Vietnam bringing the total number to more than 600 shop-inshops and 78 freestanding stores. Expanding Jeeps dedicated retail outlets is a continued initiative for 2010 and will include a launch in Latin America markets. Also slated for 2010, the U.S. launch of a mens and boys apparel program and a broader distribution of travel gear, bikes and adventure lifestyle products. Replicas remain an important segment of Jeep-licensed products and will be featured in several holiday Black Friday promotions in 2010. Marketing support of Jeep consumer products drives more than 1 billion impressions globally through consumer print, subway and billboard advertising, as well as retail promotions with BabiesRUs, Walmart and other key retailers. In 2010, Chrysler licensing revenue ($150 million) will result from partnering with leading replica and interactive companies developing programs based on vintage vehicles. Chryslers strong heritage from the muscle car era will be featured in leading interactive franchises such as Gran Turismo, Forza and Need For Speed.

56 Beverly Hills Polo Club
$550M (private) S. HADDAD, PARTNER, +1.646.266.3024
The Beverly Hills Polo Club brand is focused on major International expansion with new Marketing PLUS program and new shop concept. BHPC also has a significant focus on South America and Eastern Europe.
$510M (Private) SCOTT W. HARDY, PRESIDENT OF PLR IP HOLDINGS, +1.952.641.1020
After being acquired by Gordon Brothers Brand and Hilco Consumer Capital for $88 million in mid-2009, the Polaroid brand quickly began scoring new licensing deals and creating buzz with strategic partnerships. The brand announced a multiyear strategic partnership with Lady Gaga, who will serve as creative director for a specialty line of Polaroid imaging products. Summit Global Group signed an exclusive five-year agreement to produce Polaroid-branded digital still cameras and video cameras and distribute digital photo frames and Polaroid PoGo mobile products worldwide. Other deal include C&A Marketing for camera lenses, filters and close-up lenses, lens hoods and caps, flashes, battery grips, batteries and chargers, camera bags, binoculars and other camera accessories; jWIN Electronics for entertainment, mobile, computer and gaming peripherals; Famous Trails for night vision units, range finders and digital camera binoculars; Matsunichi Digital Holdings Limited for personal notebook accessories, including USB speakers and DVD ROM drives; Panaglobal Distribution for a line of mobile device screen protectors and protective films; and MyPhotoAlbum for Polaroid Studio, an online photo sharing service. March/April 2010 www.licensemag.com

57 Polaroid

$600M (Public) TIM CARTER, MANAGING DIRECTOR OF PATENT AND BRAND LICENSING, +1.208.396.6426
As the worlds largest technology company, HPs brand licensing program focuses on providing products that complement its leading market position in personal computers, printers and other consumer electronic product categories. HP carefully

54 Hewlett-Packard

$500M (public) NICHOLAS BLOOM, associate vp THE BEANSTALK GROUP , , +1.212.303.1186
As the worlds largest communications holding company in the world, AT&T delivers hundreds of services and products in the communications and entertainment realms, across landline, Internet, wireless, IP-TV and video categories. The AT&T licensing program leverages AT&Ts marketing/ communications spend. Current licensed products strategically complement existing telecommunications services, with more than 200 SKUs, including corded and cordless telephones, answering machines and telephone accessories. Key drivers for retail sales in 2009: increased PR and marketing campaigns to drive awareness and sales of innovative new products; campaigns tailored to specific retailers; and international expansion of licensed products. AT&T spent more than $1.4 billion on marketing in 2009. Key initiatives include the market launch of VTechs Synapse line, a business telephony system. As other U.S. landline telephone brands exit the market, AT&T licensed products continue to gain market share at leading U.S. retailers including Staples, Best Buy, Office Depot, OfficeMax, The Home Depot, Walmart, Target, Kmart, Sears, BJs, Costco and Sams Club. Program are also growing internationally as V-Tech has secured distribution in Latin America, South Africa, Australia and China.

$325M (Private) ANDREW KERR, U.K., +44 (0) 6237; NICOLE BLAKE, +1.212.659.3030
Classic Media, one of the worlds largest independent entertainment companies, is a leader in reinventing the classics of yesterday and creating the classics of tomorrow. Key licensing properties for Classic Media in 2009 included Postman Pat SDS, Casper, Wheres Wally?, Lassie and Little Golden Books. 2009 was a big year for Postman Pat across U.K./ROW. The toy range from Character Options hit shelves supported by a strong TV ad campaign and has performed well to date ranking as the No. 10 license in preschool toys (NPD full year 2009). Wheres Wally? publishing continues to build reaching 50+ million books sold and the launch on mobile platforms surpassed expectations with the brands first iPhone App reaching No. 1 in many countries, including the U.S., Canada, U.K. and Australia. In 2010, new preschool shows, Guess with Jess and Tinga Tinga Tales, have been successfully launched on CBeebies (U.K.) and will be licensed globally. Guess with Jess launched November 2009 (U.K.) and will be followed by a crosscategory L&M program from spring 2010. Fisher-Price (master toy partner) will launch product at retail in July 2010. U.K. master publishing partner, Egmont, is currently producing a new range to roll out May 2010. Key international broadcasters are signed, including Treehouse, Canada. Tinga Tinga Tales launched February 2010 (U.K.) and is set for a U.S. premiere on Playhouse Disney in early 2011. Global toy partner Bandai will launch product in the U.K. late 2010. Penguin Group is set to roll out in the U.K. in summer 2010 and internationally thereafter. Character Options will roll out further Postman Pat SDS product lines throughout 2010, the first SDS live theater tour rolls out across the U.K. from February and the Postman Pat 3D movie from Timeless Films will hit the big screen in 2011. March/April 2010 www.licensemag.com

67 Classic Media

65 The Sharper Image
$350M (Private) FREDERICO DE BELLEGARDE, VP LICENSING, +1.212.967.6000
Consumer electronics brand The Sharper Image has quickly built licensing momentum since being acquired by BlueStar Alliance, Gordon Brothers Brand and Hilco Consumer Capital in 2008. The brand has built a solid portfolio, including Audio Technologies for TVs and accessories; Southern Telecom for MP3/MP4 players, headphones, wired/Bluetooth headsets and telephones; Natura World for mattresses and adjustable beds; Samsonic Trading Co. for digital cameras and camcorders; Golden State Imports International for specialty watches and watch accessories; Famous Trails for night vision goggles, metal detectors and carrying knives; MZ Berger for specialty gift assortments; NYL Holding for desk and wall clocks; and London Luxury for a line of bedding and bath merchandise. The brand

ITV STUDIOS 68 Global Entertainment
$310M (PUBLIC) STEVE GALLANT, DIRECTOR, HOME ENTERTAINMENT AND DIGITAL; AYSHA KIDWAI, DIRECTOR, WORLDWIDE MERCHANDISING AND LICENSING, +3000
ITV Merchandising and Licensing developed previously unexploited brands in the U.K., including primetime hits Dancing On Ice and Im A Celebrity; launched toy partner in North America (Bandai) for European pre-school brand Pocoyo; and capitalized on classic ITC archive. Home entertainment launched the DVD drama exclusive Coronation Street Romanian Holiday, stand-up comic Al Murray, lifestyle brand Loose Women and achieved ongoing success with classic drama Good Night Mr Tom. ITV M&L will announce a slate of licensees for Coronation Streets 50th anniversary and activate international off-air product Integration partners for Hells Kitchen and Come Dine with Me. Home Entertainment will continue to maximize the classic film library, which includes the 5-million-unit-selling Shawshank Redemption; and grow family franchise Harry Hill and the highly anticipated The Prisoner, which is co-produced with AMC. Key retailers include HMV, Amazon, Debenhams, Argos, BHS and Tesco.
$300M (Public) NICHOLAS BLOOM, associate vice president, BEANSTALK, +1.212.303.1186

The Stanley Works

69 major league soccer
$310M (Private) STU CRYSTAL, VP OF CONSUMER PRODUCTS, +1.212.450.1234
Key retail successes for Major League Soccer during 2009 included the holiday launch of the new Philadelphia Union jersey and the incredible sales for Seattle Sounders FC merchandise throughout the year, placing that team as the leagues top seller and the best-selling soccer club in the United States. 2010 will be highlighted by the inaugural season of the Philadelphia Union and its stadium in Chester, Penn., along with the opening of the new state-of-the-art Red Bull Arena, home of the New York Red Bulls. Additionally, new identities and merchandise will be released for the leagues two new expansion franchises in Portland and Vancouver, slated to start play next year. Dicks Sporting Goods is the official sporting goods retailer of MLS and had strong presentations for teams in their local markets, while Target featured MLS hard goods throughout the chain. This year, an MLS shop will be featured during the World Cup at ToysRUs Times Square while all stores will have a strong presentation of MLS balls, goals and accessories. MLS Gear, the leagues official e-commerce site, will relaunched at the start of the season in conjunction with new Web sites for all teams.

Studio 100

as Hot Topic, f.y.e. and Hastings hosted Twilight in-store midnight DVD release parties. In the summer, there was a major presence at San Diego Comic Con followed by a fan appreciation event at a local San Diego multi-plex where fans got to see Twilight again on the big screen, were treated to cast appearances and got to preview upcoming Twilight merchandise. During the theatrical release of The Twilight Saga: New Moon in the fall, various specialty retailers, including Hot Topic, Torrid, ToysRUs, f.y.e., Borders and Hastings were key partners. Hot Topic hosted a multi-city mall tour. Additionally, there was a boutique presence with a fashion line of apparel, cosmetics and jewelry at Nordstom.

Eastman Kodak

$250M (public) PHILIP RAIA, EVP, LMCA, +1.212-265-7474

Preservation

+1.212.687.7640
78 National Trust for Historic
$225M (non-profit) MICHELLE ALFANDARI, PRESIDENT AND CEO, MODA LICENSING,
There are two key areas of focus: For home furnishings, there is the Design in America furniture collection, including bedroom, living room, dining room and accent pieces from licensee Hammary Furniture; for DIY, there is a historic paint collection with Valspar paint and a decorative moulding collection with the Empire Co. The Design in America furniture collection will add a new collection inspired by the styles of the La Valencia Hotel, which will be launched at High Point furniture market spring 2010. The decorative moulding program will continue to roll out at Lowes with about 100 new stores to be added in first half of 2010. The paint collection will benefit from an enhanced marketing initiative to launch by third quarter 2010. The Design in America furniture collection continues to be distributed in specialty furniture stores, department stores and at La-Z-Boy showrooms. The paint and decorative moulding collections are sold exclusively at Lowes.
The licensing program includes eyeglass lenses, available at professional and retail outlets and Kodak kiosks in more than 30 countries, as well as the growth of professional Kodak labs for lenses.

National Geographic

$250M (non-profit) JOHN DUMBACHER, SVP OF LICENSING, +1.202.857.7572.

112 Mark Burnett Productions
$70M (Private) AMANDA HARRELL, MARK BURNETT PRODUCTIONS, +1.310.903.5661; ROSS MISHER, PRESIDENT, BRAND CENTRAL GROUP +1.310.268.1231. ,
The top-rated television game show series Are you Smarter than a 5th Graders vast popularity grew so rapidly that in 2009, a new syndicated version of the show was developed and now airs five days a week around the country. The awardwinning show has built a full line of merchandise in several categories including gaming, publishing and digital and is carried at almost all major retailers. The propertys current licensees have received extensive placement at multiple national retailers and they will continue to expand their pipeline of products through several different editions and platforms that support the show. In addition to the current top-tier licensees, new licensees are being signed to develop new imerchandise in publishing, gaming and more, which will be based on the original and syndicated version of the show. In 2010, additions to its existing licenses are a series of invisible ink quiz books by Lee Publications and a board game by Patch Products. THQ is launching new titles for Nintendo Wii and DS. Key retail partners include Walmart, Target, Kmart, ToysRUs, JCPenney, Walgreens, Barnes & Noble, Costco, Sams Club and Best Buy.

109 Marathon Media

$80M (Private) PATRICIA DE WILDE, DIRECTOR OF LICENSING, +6600
Marathons key licensing properties include Gormiti, Totally Spies and Saddle Club. Important initiatives for Gormiti in 2010 included: the launch of the new television series together with a new style guide and dedicated toy line; pre-production of season three; and the launch of television series in several new territories worldwide along with new licensing program. For Totally Spies there was continuing strong television exposure in France; the relaunch of the television series in U.S. on Cartoon Network; the launch of new casual game on Facebook to create a strong community around the brand. For Saddle Club there was the expansion of a licensing program in France; retail partnership with ToysRUs; the launch of a licensing program throughout Europe (mainly U.K., Spain and Germany); and the launch of the first toy line and video games throughout Europe. Key retail partners include TRU, Auchan, Leclerc and Carrefour.

113 La-Z-Boy Corp.

$67M (Public) GLEN KONKLE, CEO, EQUITY MANAGEMENT, +1.858.558.2500
The La-Z-Boy licensing program continued to develop and grow in 2009 as exciting new initiatives and increased distribution drove licensed retail sales. It capitalized on La-Z-Boys ownership of the powerful equity of comfort and its other established components of quality, durability and relaxation. Licensed product sales in the outdoor casual furniture category generated strong placement within a variety of big box retailers and specialty stores. The future of this particular licensed business will be further enhanced by new line extensions and the introduction of the Outdoor Select program that will target high-quality, independent specialty outdoor retailers. Retail growth for the La-Z-Boy licensing program will increase in 2010 due to the January launch of the premier and signature spa collections, as well as strengthened distribution for the home office seating program. The spa program is expected to be available in select pool and spa dealers later this year and the new home office seating program will be available in office superstores and club/warehouse chains early in 2010. In 2010, La-Z-Boy will continue to leverage its powerful brand by extending it into new product categories such as casual footwear, domestics, bedding and furniture covers. March/April 2010 www.licensemag.com

Scholastic 123 Media

$50M (public) LESLYE SCHAEFER, SVP, MARKETING AND CONSUMER PRODUCTS, +1.212.389.3900
Scholastic Media has big plans in 2010. Clifford the Big Red Dog celebrates its 10th anniversary on PBS Kidsand the momentum for the characters Be Big integrated cause marketing campaign continues as it heads into the second year with its first corporate sponsor, an expanded annual Be Big in Your Community Contest and a major retail promotion. SM will expand the reach of its Scholastic and Little Scholastic brands for the infant, toddler and childrens market and has inked deals with Kids Station and Tara Toy. For SMs superhero Wordgirl, in addition to a new DVD from Paramount Home Entertainment, Briarpatch

licensing agents

License! Global looks at the agents that finesse some of the biggest brands in the business into licensing powerhouses.
$7B (Private) TIM ROTHWELL, EVP/CO-MANAGING DIRECTOR, WORLDWIDE LICENSING, +1.424.653.1660; BRUNO MAGLIONE, EVP/CO-MANAGING DIRECTOR, WORLDWIDE LICENSING, +44 (0) 6668; PAT BATTLE, SENIOR CORPORATE VP, IMG COLLEGE, +1.770.956.0520
Key licensing properties include top five colleges (Alabama, LSU, Georgia, Florida and Texas); 200 colleges and universities, conferences, bowls, the NCAA, the Heisman Trophy, NCAA Tournament of Roses, BCS, Southern Eastern Conference (SEC); Oxford, Wimbledon, Arnold Palmer, The PGA Tour, Ryder Cup, The Open, Rugby World Cup, Ferrari, EA Sports, X Games, LA Gear, Manchester United, Italian National Soccer Team, Juventus, FCB, Chevron/Texaco/Caltex, GNC Live Well, Chicken Soup for the Soul, Casa Cristina, Canadian Football League, Canadian Hockey League, Churchill Downs, Goodyear, Petty, Pele, Royal Navy, AAA, LeMans, Vuarnet, 24 Hour Fitness, Vail Resorts, Gotcha and World Series of Poker. Key focus for 2010 involves expanding global partnerships with brands, manufacturers and retailers in all categories of business and maximizing retail exposure for clients with market-right strategies.
Leveraged 3 Marketing Corporation of America
$4.95B (Private) ALLAN FELDMAN, CEO, +1.212.265.7474 X202
Key properties include AgfaPhoto ($200M); Black Flag ($65M); Eastman Kodak ($250M); Frigidaire ($850M); Mack Trucks ($60M); Melitta ($150M); Roto-Rooter ($75M); Westinghouse ($800M) and Winchester ($300M). Other brands ($225M) include American Dental Association, Easter Seals, Heifer International, New York Philharminic, RedWing, San Diego Zoo and United Airlines. Growth for 2010 will come largely from international expansion and entry into new categories. Distribution is varied across different client brands and categories. Retail partnerships and/or DTR will represent a growing portion of overall sales, but in 2010 it will still occupy less than a 15 percent share of the total.

$2.78B (Private) ANGELA FARRUGIA, MANAGING DIRECTOR, +1.212.413.0880
The Licensing Company Group
TLCs key properties include Coca-Cola, National Trust, Jelly Belly, Reckitt Benckiser and Welchs, which all contributed to continued growth in 2009. Key inititiaves in 2010 will focus on the new partnership with Iconix JV in Europe, food and beverage brands and a strong entertainment portfolio. Key retail partners include Walmart, Kroger, Publix, Tesco, Sainsburys, ASDA, Carrefour, and speciality retailers worldwide.
licensees and retailers to develop a wide range of birthday promotions and products. The Ladies of Springfield is Foxs latest addition to The Simpsons program; a sub-brand solely focusing on the female characters each positioned for a different target audience with Marge aimed at women and Maggie and Lisa for the teen/tween market. Existing licensees are also incorporating the new artwork into their current lines to increase the female product category further. How to Train your Dragon and Shrek Forever After are two more widely anticipated properties from Dreamworks Studio. A full merchandising program will be released for the final Shrek movie in this successful franchise. There will also be continued growth with WWE as the TV series and live shows gain popularity and the huge appetite for merchandise shown by the fan base looks to also increase. With the interest in soccer mounting as England prepares for the World Cup 2010, the England FA license will continue to expand. CPLG works closely with retailers on an international and local level to raise awareness of brands, merchandise and promotional programs. Direct-to-retail deals continues to remain an important focus.

Brand Sense Partners

$1.3B (Private) RAMEZ TOUBASSY, PRESIDENT, +1.310.867.7222
BSPs key properties include Armor All, Bravo, Britney Spears, Chuck Norris, Dodge, Halle Berry, Kingsford, Marlon Brando, MGM, Shabby Chic, Shape Magazine, Sheryl Crow, Smart Balance, STP, Syfy Channel and Travel Channel. BSP is expanding its client roster across licensor product categories with a special focus on food and beverage, fashion, housewares, home furnishings and green products. BSP, which acquired the Shabby Chic brand in 2009 and has been responsible for managing the brands direct-toretail program with Target, has high-level relationships with retailers in all distribution channels.

The Joester Loria Group

$1.8B (Private) DEBRA JOESTER, PRESIDENT; JOANNE LORIA, EVP, +1.212.683.5150
Joester Lorias key properties include Jeep, Chrysler, Discovery Channel, Animal Planet, Planet Green, Planet Earth, Pepsi, Moutain Dew, Aquafina, AMP energy drink, Entenmanns, Baby Genius and Pinkalicious. Key initiatives include expanding Jeep consumer products worldwide. More than 600 shop-inshops and 105 freestanding stores drive international growth, while apparel, footwear, luggage and juvenile products are key growth categories worldwide. Animal Planet pet products and lifestyle products for children and adults were successfully introduced in 2009, augmenting existing programs, including a DTR deal with TRU featuring a 12-foot section. Discovery Channel programs launched in 2009 are positioned for significant growth in 2010. Discovery Adventures, the adventure travel license launches with trips to 31 destinations and early bookings are strong. Meanwhile, Discovery Expedition, the networks official lifestyle brand will expand from gift and gear to apparel, accessories and other categories. A focus on mobile games and interactive will feature more than a dozen new titles in 2010 for various clients with a focus on Discovery Channels top series and Animal Planet. Baby Genius expands into multiple categories, leveraging the successful launch of a 7-foot toy section in Walmart stores last fall, along with the ongoing success of entertainment and DVDs. Pinkalicious, a top-selling book franchise for HarperCollins, officially launches in national chains, including Walmart, with a number of categories including toys (Jakks), apparel, accessories and home textiles. A new interactive Web site, advertising support and a spring 2010 Burger King promotion will further promote the brand in 2010. At BabiesRUs, two Jeep juvenile product promotions in 2009 included in store demos, front of store displays, email blasts and circulars, resulting in significant sales increases and the addition of new product. At TRU a new collection of Animal Planet toys were launched in new packaging, supported by both TRU and Animal Planet with aggressive marketing support. Baby Genius launched 7-foot sections in Walmart. At PetSmart, Animal Planet launched pet toys and related product in all stores with a 5-foot section. JCPenney and Kohls were key retailers for Discovery Expedition gift and gear. Bed Bath and Beyond launched Animal Planet pet beds and pet blankets. Edgars (South Africa), Liverpool and Sears (Mexico), Parkson & Sogo (China), Takeshimaya (Singapore), and Lotte & Hyundai (Korea) are some of the international department store chains with in-store Jeep boutiques.