News & Insights

Novelty bar Holey Moley creates a nostalgic experience for mini-golf lovers with its popular chain of bars across Australia.

Now, it’s taking a swing at a US gameshow for using the Holey Moley trade mark without permission.

Funlab is the owner of the Holey Moley mini-golf bars, as well as Strike Bowling and Sky Zone. Its unique ‘out of home’ entertainment has resulted in Funlab opening 13 Holey Moley bars across the nation and recently expanding to New Zealand and Singapore.

In 2018, Funlab hosted a ‘Holey Moley Masters’ nationwide mini-golf competition for a prize of $10,000.  In anticipation of opening mini-golf bars in the US, Funlab registered its Holey Moley trade marks with the US Patent and Trademark Office (USPTO) in 2018.

Recently, a new US gameshow called ‘Holey Moley’ began airing in the United States. The gameshow, produced by Eureka Productions, involves contestants competing for a prize in a mini-golf competition.

Prior to the gameshow airing, Eureka Productions attempted to register “Holey Moley” for the same classes under which Funlab’s marks are registered. Subsequently, the USPTO denied Eureka’s application, arguing that its proposed mark was deceptively similar to Funlab’s prior registrations and that there was a strong likelihood of consumer confusion arising between the marks.

Despite having its mark rejected by the USPTO and being made aware of Funlab’s prior registrations, Eureka Productions continued using the name for its gameshow.

Attempts to resolve the dispute

After failed attempts to resolve the dispute, Funlab filed a trade mark complaint in the Californian Federal Court against Eureka Productions seeking an injunction and damages. The injunction required Eureka to include in the credits of the gameshow that Holey Moley is a registered trade mark of Funlab.

In its complaint, Funlab highlighted the likelihood for confusion given both marks cover miniature golf courses and competitions. Funlab noted that when it opens Holey Moley venues in the US, it is likely consumers will assume that the venue is affiliated with the gameshow or that the gameshow is authorised by Funlab. The complaint outlined that Funlab will be harmed, as it cannot control how consumers respond to the Holey Moley brand.

Businesses that intend to expand internationally should be proactive and register their valuable trade marks overseas, before entering into that jurisdiction.  Where protection has been granted and rights have been infringed, it is important to enforce your trade mark rights to send a clear a message to the marketplace that unauthorised use will not be tolerated. Otherwise, infringement of your trade mark rights could result in irreparable damage to your brand and reputation.

Macpherson Kelley can assist with trade mark availability searches and applications locally and overseas and can also provide advice and assistance if your intellectual property rights have been infringed. If you have any questions our Intellectual Property team.

This article was written by Belinda Sigismundi, Principal Lawyer and Emma Berry, Lawyer – Commercial.