David floors Goliath at the Patent Office

August 2019

David floors Goliath at the Patent Office

In terms of David and Goliath stories they don’t come much bigger than two recent trade mark oppositions from television behemoth HBO (Home Box Office) against two UK companies who HBO believed to be unfairly benefiting from its Game of Thrones brand.

First, the TV network opposed an application from vaping brand Game of Vapes to register its logo for goods in class 34, listing tobacco, lighters, matches and smoking products in the specification. Opposing the application based on its registered and unregistered rights, reputation and goodwill in Game of Thrones and the show’s logo, HBO argued that ‘the opponent clearly enjoys a significant reputation and a notable goodwill in connection with an ongoing television programme under that name’.

Game of Vapes owner, Maanmohan Singh, denied all the claims made by HBO and the hearing officer of this opposition concluded that the fact HBO does not have a variety of ‘Game of…’ trademarks was evidence that Game of Vapes could not be considered a natural brand extension to HBO's mark, as all Game of Thrones merchandise was marked as such without variation in the wording.

Meanwhile, HBO also took on Wiltshire-based brewery Wadworth after it launched a “Game of Stones” pale ale in August last year. With a view to protecting the brand, Wadworth filed a UK trademark application for a “Game of Stones” mark, seeking protection for the mark in connection with various types of beer.

Unanimous decisions

The final Game of Thrones season may have divided viewers, but the decisions finally handed to HBO by the Hearing Officers were unanimous in dismissing their argument that there would be a likelihood of confusion to the average consumer in relation to similarity of the marks.

Instead, the hearing officers’ decisions discuss that while consumers may be reminded of Game of Thrones by Game of Vapes and Game of Stones, the names and additional visual elements are sufficient that consumers would instantly recognise GoT was not the source, and that they are merely comedic plays on the name.

Lessons for businesses

For small businesses paying attention to these cases, the idea that it may pave the way for them to take elements of a popular product or brand for use in their own marketing is a big deal. Both cases are sure to bolster smaller businesses in similar scenarios who are concerned they may be at a disadvantage because of their size.

The two decisions confirm that being able to demonstrate that two marks sharing some slight similarities is not always sufficient for those marks to be found to be confusingly similar and therefore ineligible for registration. The similarity between two marks must be enough to result in a likelihood of confusion to the average consumer; marks will not be deemed to create such confusion unless they do so overall, taking into account their dominant and most distinctive elements. Simply because a mark may bring an earlier mark to mind does not necessarily mean that there would be a likelihood of confusion (case).

Further, it shows that the goods and services for which a trademark is filed will always be a relevant factor. Had Game of Vapes or Wadworth’s marks been filed for entertainment services or services related to the production of TV shows; services in which the Game of Thrones brand enjoys significant reputation, the outcome of these cases may have been very different.

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