Home Box Office, Inc. (HBO), which broadcasts the “Game of Thrones” series, has been unsuccessful in its opposition of two applications to register trade marks with the UK Intellectual Property Office (UKIPO). The opposed applications were for the figurative marks “Game of Vapes”, applied for in respect of tobacco products (read full decision here), and “Game of Stones”, applied for in relation to beers, ales, stout, etc. (read full decision here).
What can you take away from this?
Here are two occasions where, despite acknowledging the similarities between the earlier and opposed marks and the marks’ overlapping specifications, the UKIPO dismissed the earlier mark holder’s opposition on the basis that the contested marks were no more than a comedic play on the name “Game of Thrones” and a parody of the existing marks.
These cases remind us of the importance of having a robust trade mark portfolio with specifications that are tailored to the use you intend to make of the mark. In the event of an opposition or a dispute, it is also important to be able to provide adequate evidence of your use of the earlier mark and your position in the relevant market.
What was the UK Intellectual Property Office’s (UKIPO) reasoning?
HBO ran three arguments on relative grounds for refusal in both cases:
- The marks were similar in relation to identical or similar goods (s5(2) TMA 1994);
- The opposed mark would be detrimental to HBO’s earlier marks that have a reputation and distinctive character in the UK or in the EU (s5(3) TMA 1994); and
- Use of the opposed mark would amount to a misrepresentation that the goods were sold by, or had been authorised by, HBO (s5(4) TMA 1994).
Ground 1 – The marks were similar in relation to identical or similar goods
The UKIPO considered that the goods covered by both applications overlapped with those covered by the earlier marks’ specifications. in respect of “Game of Vapes”, the UKIPO concluded that the goods were similar to a medium to high degree as the goods could be alternatives to one another any may be in direct competition. In respect of “Game of Stones”, both specifications covered beer and therefore the goods covered by the earlier and opposed marks were, to at least some extent, identical.
In both cases, the UKIPO considered the aural and visual similarities of the marks. The presence of “GAME OF” was influential in creating aural and visual similarity. In the case of “Game of Stones”, the UKIPO considered that the opposed mark introduced significant visual differences which meant that there was a lower level of visual similarity to the earlier mark.
The conceptual differences in both cases meant that the earlier and opposed marks shared a low level of conceptual similarity. In respect of “Game of Vapes”, the UKIPO concluded that the marks have no overall concept in common beyond both referring to games and that, in any event, “thrones” and “vapes” evoked difference concepts. As for “Game of Stones”, the conceptual differences between thrones and stones also meant that the marks shared a low level of conceptual similarity.
When considering the likelihood of confusion, the UKIPO concluded that the conceptual differences between the marks were sufficient to counteract the visual and phonetic similarities between them. There was no likelihood of direct or indirect confusion.
Ground 2 – Detriment to the reputation and distinctive character of earlier marks in the UK or in the EU
GAME OF VAPES
The UKIPO noted that the earlier mark had a higher than average degree of distinctiveness. The evidence filed by HBO demonstrated their use of the mark beyond the core of television programs, extending into merchandising. However, they noted that use of the earlier mark targeted fans of the show and there was no evidence that the merchandising business was independent of it. HBO’s evidence did not demonstrate the distinctiveness of “GAME OF THRONES” beyond the core activity of the TV show.
HBO provided evidence of use of the mark for merchandising purposes, but this was not sufficient to demonstrate that it had a reputation in this regard. The UKIPO considered that HBO’s reputation in the mark was limited to the TV show and had not transferred or extended to other activities. This entertainment service was not included in the earlier trade mark registration relied upon and therefore this argument was dismissed.
GAME OF STONES
HBO was not able to supply evidence that its earlier mark had been used or licensed for use in respect of beer in the UK, despite such use having been made in the USA. The UKIPO considered that this excluded enhanced distinctive character in respect of such goods and that they only needed to consider inherent distinctive character. They concluded that HBO’s earlier mark had an average level of distinctiveness as “Game of Thrones” has no direct meaning in relation to beer.
HBO showed evidence of their Community trade mark’s having a strong reputation in respect of the television series “Game of Thrones”. However, the specifications of the earlier marks relied upon did not include entertainment services covering their TV show. This meant that HBO did not have the requisite reputation on which it could base a section 5(3) ground of opposition. In the absence of such a reputation, the UKIPO did not consider whether any unfair advantage would be conveyed to the applicant or whether there would be any detriment to HBO.
Ground 3 – Passing Off
In both cases, the UKIPO concluded that there was insufficient evidence that the applicant’s mark sought to deceive consumers.
In respect of “Game of Vapes”, the UKIPO found that a consumer would either instantly (or very quickly) be aware that the “Game of Vapes” products did not emanate from the same source as those products covered by the earlier mark. The UKIPO considered it more likely that the consumer would understand the application to be a comedic play on “game of thrones”. This was not sufficient to produce the misrepresentation element required for a successful passing off claim. The UKIPO concluded it was difficult to see how misrepresentation and therefore damage could occur.
As for “Game of Stones”, the UKIPO thought it likely that the applicant had taken inspiration from HBO’s sign, but that there “may be no more than an attempt at parody, namely, an imitation of the style of the opponent’s sign for comic effect, rather than an intent to deceive”. Again, this was insufficient to establish misrepresentation had occurred.
To find out more
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Please do not hesitate to contact us if you would like our assistance.