HBO fails in attempt to protect Game of Thrones trade marks

While the final season of the wildly popular television series, "Game of Thrones", will be released later this year, 2019 did not get off to a good start for the series producer, Home Box Office (HBO), as they already suffered defeat in opposing two trade mark registrations before the UKIPO. Let’s hope Jon Snow has more luck fighting against the White Walkers in the upcoming season. In the meantime, Katfriend John Shaw summarizes the UKIPO’s oppositions for us. Read on for more!

HBO is the holder of 12  EUTMs registrations for the mark Game of Thrones in word and figurative forms, and it has already filed  another eight applications this year. In hearings before the UKIPO, which took place in October and November last year, the production company opposed the registration of two different trade marks. The first application related to a figurative mark containing the words "Game of Vapes", applied for tobacco products. The second application concerned a figurative mark including the phrase "Game of Stones", registered for a Wadworth’s golden ale.

Game of Vapes

Application -- Maanmohan Singh applied to register the trade mark “Game of Vapes” in April 2017 in respect of goods in class 34 (Tobacco, Smokers' articles: Matches). HBO opposed the registration on the basis of its earlier EUTM "GAME OF THRONES" , registered inter alia for goods in that class.

At the hearing on 10 October 2018, HBO argued that their mark enjoyed substantial goodwill in connection with a variety of goods, so much so that --  

"[the] use of the later trade mark [Game of Vapes] would amount to a misrepresentation that the goods were those of the opponent or that they had in some way been authorised by or connected to the opponent. The later use would also lead to the belief that the parties are economically linked undertakings, when no such link exists. It is clear... that the applicant is solely riding on the coat tails of the opponent." (para 4/page 3)

HBO also submitted evidence related to licensing and various other activities it undertakes with respect to the mark, such as the GAME OF THRONES travelling showcase exhibition, to prove the commercial use of its registered trade marks. To support the argument that its marks have a reputation in respect of a wide range of goods and services, HBO argued, under Section 5(3) of the Trade Mark Act, that consumers well-recognize the licensing or authorised merchandising of goods.  

Decision -- The marks owned by HBO were considered to be visually and aurally similar to Singh’s mark, but only to “a medium degree” (para 23 & 24). The UKIPO considered that the difference in concept was significant and would inevitably lead the consumer to understand “Game of Vapes” to be a “comedic play on game of Thrones" (para 53). Moreover, it was held that “Game of Vapes” was not a "natural brand extension" of “Game of Thrones”, because no range of "game of..." trade marks exists. Although a consumer may be reminded of the earlier trade marks [owned by HBO], it would only amount to mere association, not indirect confusion. As a result the opposition failed in its entirety.

Game of Stones

Application -- Wadworth and Company Limited applied to register a figurative trade mark, which included a graphical depiction of stones (configured in a similar manner to Stonehenge) located above the words: “Wadworth” and “Game of Stones”.  Their trade mark application was published on 22 September 2017, for the following goods in Class 32: Beers; ales; porter; stout; flavoured beers.

HBO opposed the application based on two earlier marks: the GAME OF THRONES word mark and a figurative mark of the same words in a stylised form. At the hearing on 13 November 2018, HBO  argued, based on section 5(2)(b), section 5(3) and section 5(4)(a) of the Trade Marks Act 1994, that the contested mark was confusingly similar to its earlier marks. HBO added that the applicants would unfairly benefit from the recognition of its earlier marks. The series producers also argued that allowing the registration would result in the dilution and “blurring” or “whittling away” of the reputation of their registered marks.

Decision -- Visually, the marks were considered to share a low level of similarity on the basis that the Wadworth mark contained significant elements, such as the stone circle device, which were not present in HBO’s mark. As regards the aural similarity of the marks, Wadworth submitted that, upon ordering the beer, the average consumer uses the name of the beer producer, “Wadworth” and not “Game of Stones”. However, there was no evidence to support this and the UKIPO noted that the average consumer may order a pint using different words, based on the number of Wadworth beers available. An average consumer would not request “Wadworth” if there was a range of beer available from this brewery. By contrast, if there was only one Wadworth beer on tap, an average consumer may request it by using the name “Wadworth”.  Accordingly, the UKIPO concluded that the marks were aurally quite similar.

The UKIPO determined that the level of conceptual similarity between the marks was low. Although both marks contained the phrase "Game of 'something' wherein the 'something' is not a normal game...", the words ‘thrones’ and ‘stones’ were considered to be different enough to not cause confusion (para 21). The UKIPO found that the use of the device of a stone circle in the opposed mark supported this conclusion.

"Game of Thrones" merchandise
(whiskey bottles)
Photo by J. Shaw

The UKIPO also rejected HBO’s claim under Section 5(4)(a), specifically referring to passing off. HBO failed to overcome the hurdle of proving actual or potential misrepresentation of the goods to the consumers. The UKIPO noted that whilst it was likely that some inspiration was taken from the opponent’s sign, it was no more than an attempt at parody or imitation rather than an intent to deceive. The concept of parody is probably better known through its application in copyright law, but there is also a parody exception for trade marks under UK law (see the UK decision Toys ‘R’ Us  (2003)). Based on the foregoing, the second opposition submitted by HBO also failed.