This article first appeared on World Trademark Review in April 2019. For further information please go to www.worldtrademarkreview.com.
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Game of Thrones producer HBO opposed registration of GAME OF VAPES for "tobacco, smokers' articles: matches"
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Section 5(2)(b) claim failed as conceptual differences outweighed visual and phonetic similarity between marks
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Section 5(3) claim failed as HBO was only able to demonstrate reputation in GAME OF THRONES relating to television show
In Decision O/103/19, the UK Intellectual Property Office (UKIPO) has rejected Game of Thrones producer Home Box Office Inc (HBO)’s opposition to an application to register GAME OF VAPES (figurative, as depicted below) as a trademark for "tobacco, smokers' articles: matches".
This is the second such UKIPO defeat for HBO in recent months, following on from Decision O/072/19, in which registration of the device mark GAME OF STONES was allowed for beer.
Background
The opposition was based on claims under Section 5(2)(b) (similar marks, identical or similar goods and a likelihood of confusion), Section 5(3) (similar to a mark with a reputation and use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark) and Section 5(4) (use of the mark liable to be prevented under the law of passing off) of the Trademarks Act 1994. HBO relied on a word mark registration for GAME OF THRONES covering "cigars; lighters for smokers; humidors; holders for cigars and cigarettes; ashtrays for smokers", along with its use of the mark in relation to a television show and associated merchandise.
Section 5(2)(b) claim
The opposition was unsuccessful on this ground despite the identity and similarity of the goods. The hearing officer found that, while the marks were visually and phonetically similar, they were conceptually dissimilar due to the different conceptual connotations of the words ‘thrones’ and ‘vapes’. Under her global assessment on the likelihood of confusion, the hearing officer concluded that the conceptual differences outweighed the visual and phonetic similarity between the marks, saying that they would "inevitably lead to the consumer noticing the differences between the marks" (Paragraph 35). The hearing officer went on to accept that the consumer "may be reminded of earlier trademark as the use of the words 'game of…' is unusual", but considered this to be "mere association and not confusion" (Paragraph 38).
Section 5(3) claim
This ground of opposition failed as HBO was only able to demonstrate a reputation in GAME OF THRONES relating to the television show. No reputation existed in other goods or services, although merchandise had been produced, because it was all connected to the television show. The registration relied on did not cover televisions shows, therefore this claim was not held to be well founded.
Section 5(4) claim
The elements necessary to reach a finding of passing off are goodwill, misrepresentation and damage resulting from the misrepresentation. The hearing officer held that significant goodwill had been evidenced in GAME OF THRONES for the television show, but that the goodwill did not extend beyond that to the relevant goods.
In rejecting the possibility of a misrepresentation, the hearing officer accepted that a consumer presented with GAME OF VAPES "may fleetingly be reminded of Game of Thrones" but "would either instantly (or very quickly) be aware that this product has not emanated from that source". Instead, the hearing officer considered "it is more likely that the consumer would understand the application to be a comedic play on 'game of thrones'” (Paragraph 53).
Comment
This case shows that conceptual differences can outweigh visual and phonetic similarities and that even a clear reference to an earlier mark can be acceptable where that reference is not likely to give rise to confusion as to the source of the goods or services. It also shows that owners of even very well-known marks may find that the reputation in their mark does not extend beyond the core goods or services for which it is well known.