GAME OF THRONES disqualifies Game of Döner from trade mark

A few days ago, the Opposition Division of the EU Intellectual Property Office (EUIPO) issued a decision concerning the reputation of the trade mark “GAME OF THRONES”, owned by Home Box Office, Inc. (HBO), and whether the registration of “GAME OF DÖNER” should be refused under Article 8(5) of the EU Trade Mark Regulation (EUTMR).

Kat Lannister will not give up its throne!

Findings of the Opposition Division

Pursuant to HBO’s claim that the registration of the contested sign as an EU trade mark would take an unfair advantage of the well-known “GAME OF THRONES” mark, the Opposition Division assessed the relevant factors under Article 8(5).

Reputation of the earlier trade mark

The Division stated that all the relevant factors, including the earlier mark’s market share, intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it should be evaluated. According to the Division, from the numerous evidence submitted by HBO, part of which referred to the world-wide fame of Game of Thrones, it was sufficiently demonstrated that the TV series was highly popular amongst the EU public.

The Opposition Division also emphasised that the sign “GAME OF THRONES” has been used for over 10 years, not only as the title of a copyright work, but also as an indicator of commercial origin. The wide use of the sign “GAME OF THRONES” in relation to the TV series itself as well as to numerous merchandise and events -such as the Game of Thrones tours, whiskey tastings, and collectibles and lifestyle products – rendered the perception of the sign not only as a title, but also as a trade mark.

Consequently, the Division held that HBO proved a high degree of reputation of its trade mark in the EU, at least in relation to “entertainment in the form of television programmes” in Class 41 of the Nice Classification.

Similarity of the signs

The signs were found to be visually similar at least to a below-average degree and aurally similar at least to an average degree. In relation to conceptual similarity, it was held that both signs refer to the same concept of “a game of something”.

Accordingly, the global impression given by the signs were found to be similar, meeting the second requirement of Article 8(5) EUTMR.

The ‘link’ between the signs

The Opposition Division found a “direct link” between the contested services in Class 43 and HBO’s reputed services while acknowledging the link between the latter and the contested services in Classes 35 and 45 to be “more remote”. Nevertheless, it emphasised that both HBO’s brand expansion practices outside of the “entertainment in the form of television programmes” and the inclusion of a dragon in a shield-like frame in the contested sign could mislead the relevant consumers as to the commercial origin of the contested signs. Given that the concepts of dragons and knighthood are directly related and central to the storyline of Game of Thrones, by using figures that remind the consumers of the series, the contested sign would likely call to mind the reputed brand, when seen in relation to all the contested services.

Risk of injury

The Opposition Division assessed the possibility of free-riding. It found that “the appeal of the earlier mark is undeniable”, “the relevant public would be particularly attracted by the positive associations that the Game of Thrones series triggers”, and consumers would therefore, “transfer the values of the earlier mark to the services bearing the contested mark”. Consequently, this value transfer would allow the proprietor of the contested sign to market and profit from its services without making the necessary investments, thereby taking an unfair advantage of the reputation of HBO’s “GAME OF THRONES”.

Conclusion

In light of all the observations, and the lack of any due cause submitted by the contested sign’s proprietor, the Opposition Division refused the registration of GAME OF DÖNER for all the Classes it sought registration.

Comment

Although the findings of the Opposition Division and the impact of Article 8(5) EUTMR on the market might be such as to create difficulties to small businesses entering the market, the achievements, substantial investments, and the meticulously planned branding strategies of big companies and well-known trade marks deserve acknowledgement, and in suitable cases, broader scope of protection.

In this Kat’s view, HBO took legitimate action to protect the image of its iconic “GAME OF THRONES” trade mark by preventing an unauthorised party from exploiting its efforts in building and maintaining a positive brand image in the eyes of the relevant public. It is thus obvious that HBO is defending its throne – perhaps even better than Cersei Lannister!

Image credit: Imagen 3