Ubisoft’s ‘FOR HONOR’ loses trade mark battle before EU General Court

Enter the world of online gaming and you will most likely discover games such as Ubisoft’s Assassin’s Creed, Watch Dogs, and Far Cry. When I played Ubisoft’s For Honor in 2017, I chopped, smashed, and stabbed more medieval bodies than I could ever image, but little did I know that its relevance would resurface again in 2022, although this time in a courtroom.

The EU General Court considered that, because of (1) the high degree of visual, phonetic and conceptual similarity between the earlier figurative mark and the Ubisoft's mark 'FOR HONOR' and (2) the circumstance that the goods and services were identical and similar to a varying degree, a likelihood of confusion on part of the English-speaking part of the public would subsist between 'FOR HONOR' and Huawei's 'HONOR'.

Background

In 2015, Ubisoft (the applicant) applied to register the following figurative sign as an EU trade mark (EUTM):

Registration was sought for goods and services in classes 9 (games software’, software for playing video, computer and online games, software incorporating computer games, computer software for video and audio games and audio visual games on computer hardware platforms), 28 (audio visual games on computer hardware platforms), and 41 (providing computer and telecommunications technology training, information on on-line computer games and other online entertainment’ and ‘games offered online (on a computer network) of the Nice Classification.

In 2016, Huawei Technologies Co. Ltd submitted an opposition pursuant to Article 8(1)(b) of Regulation 2017/1001 (EUTMR), based on its earlier EU word mark ‘HONOR’, covering goods and services in Classes 9 (computers), 35 (retail services in relation to computers), and 38 (computer communication services).

The EUIPO Opposition Division partially upheld the opposition, so that the applicant filed an appeal to the EUIPO Fourth Board of Appeal (the board). The board declared the appeal inadmissible in respect of the goods and services for which the opposition had been rejected and dismissed the appeal so far as it concerned the goods and services that were refused by the Opposition Division. A further appeal to the General Court followed.

The decision

By first assessing the public, the General Court considered that it consisted of both the general and professional English-speaking public of the EU, with an average to high level of attention, depending on the price and degree of sophistication of the goods and services.

Moving to the comparison of the goods and services, the General Court systematically considered each of the goods and services covered under each of the respective classes.

As regards the goods in class 9, it found that these were complementary, could be used together and thus could be intended for the same public. In particular, a relationship of functional complementarity was established between ‘games software’ in Class 9 covered by the applicant’s mark and ‘computers’ in the same class covered by the earlier mark.

Furthermore, the fact that the English-speaking part of the public was informed of the existence of both of the marks at issue did not preclude the goods covered in Class 28 in the applicant’s mark and ‘computers’ in Class 9 covered by the earlier mark from being considered similar.

As regards to the services in Class 41 of the applicant’s mark, the General Court reasoned that, although they are not the same in nature, ‘providing computer and telecommunications technology training, information on online computer games and other online entertainment’, and ‘games offered online (on a computer network)’, all are supplied in the field of computing and may cover the same consumer circles and distribution channels as ‘computers’ in Class 9 covered by the earlier mark.

Having considered the similarity of the goods and services, the Court compared the signs at issue by first analyzing their visual similarities. It held that the graphic characteristics of the applicant’s mark had a limited impact. Although it follows from settled case law that consumers attach more importance to the initial part of a sign, whether that is actually the case depends on the particular circumstances of each case. As a result, the General Court did not accept that the word element ‘for’ should be given greater importance than the word element ‘honor’.

In relation to the phonetic similarity, the Court held that, despite the presence of the word element ‘for’ in the applicant’s mark, such element would not call into question that both signs are phonetically similar to a high degree.

The same conclusion was reached as regards the conceptual similarity: the General Court considered that both marks had a similar meaning because of their common element ‘honor’, which indicates a high respect and adherence to a code of conduct.

Furthermore, the earlier mark was considered to have a normal degree of distinctiveness since it had no meaning in relation to the goods and services covered by that mark.

In light of the foregoing, the General Court concluded that, in view of the presence and position of the element ‘honor’ common to the marks at issue, the English-speaking part of the public, even if it displayed a high level of attention, might be led to believe that those goods and services come from the same undertaking or from economically linked undertakings.

Comment

While the General Court (in this author’s view) correctly approached the assessment of the likelihood of confusion pursuant to Article 8(1)(b) of the EUTMR, from a gamer-perspective it may be a stretch to image that smartphone handsets, tablet computers, and wearable technology could be held similar to a gaming franchise. Would the General Court’s opinion differ if the judges also had had an opportunity to play For Honor?