I would imagine this is what Wadworth and Company Limited (“the Company”) will be doing, given its recent successful trade mark registration for its new golden ale, “Game of Stones”. However, it is doubtful whether American Network HBO (“HBO”) will be doing the same when season 8 of Game of Thrones airs on 14th April.
In August 2017, the Company (an independent family brewer based in Wiltshire) applied to the UK Intellectual Property Office (“UKIPO”) to register the logo “Game of Stones” as a trade mark in class 32 relating to beers, ales, porter, stout and flavoured beers.
The ale and subsequent proposed logo used were designed to celebrate the county of Wiltshire’s mystical heritage, both Stonehenge and Avebury stone circles are located within the county.
UK Trade Mark Application Process
As part of the UK trade mark application process, all accepted applications are published and enter into the “Opposition Period” which allows third parties or those owning similar or identical trade marks to oppose the registration of the proposed trade mark, where there is a risk of confusion with an earlier registered trade mark.
HBO’s Opposition Action
As you may imagine given the success of the TV show Game of Thrones, an epic medieval fantasy spanning 7 seasons, with the eighth and final season due to premiere shortly, HBO own a number of earlier registered trade marks for Game of Thrones (10 in total – 9 in the EU (covering the UK) and 1 in the US). Therefore HBO submitted an opposition action against the Company.
The opposition was based upon the following sections of the Trade Marks Act 1994 (“the Act”):
- section 5(2)(b)- similarity to HBO’s earlier marks;
- section 5(3)- HBO’s earlier marks having a reputation in the UK; and
- section 5(4)(a) – goodwill of HBO’s marks and misrepresentation by the Company.
The UKIPO ruled in favour of the Company, based on:
1. Similarity under section 5(2)(b):
- Sabel BV v. Puma AG Case C251/95 – the average consumer test. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The Company’s proposed trade mark consisted on several complex elements compared with HBO’s 3 words.
- Visually: there were significant visual differences.
- Aurally: there was a high level of aural similarity.
- Conceptually: whilst there were some conceptual similarities, they were clearly not identical.
- Likelihood of confusion – the evidence failed to establish that the average consumer (in the UK) is aware of the use of “Game of Thrones” in respect of alcoholic beverages. The similarities between the marks were deemed to do no more than bring the earlier mark to mind – the consumer is unlikely to consider that the respective goods originate from the same or linked undertaking.
2. Reputation under section 5(3):
- There was no denying that Game of Thrones has a significant reputation in the UK given the popularity of the TV series and its airing on UK TV over a 6 year period, however HBO hadn’t registered its earlier trade marks to cover such entertainment services. Therefore this section 5(3) argument failed entirely.
3. Goodwill and misrepresentation under section 5(4)(a)
- The TV series clearly had significant goodwill in the UK.
- Whilst HBO argued that the Company was trying to imitate HBO’s signs and take advantage of this goodwill, the UKIPO found that whilst it is likely that the Company took some inspiration from HBO’s sign, it amounted to no more than an attempt at parody rather than an attempt to deceive and misrepresent themselves as being connected to, or in some way linked to HBO and its trade marks.
The Company’s trade mark application was therefore allowed to proceed to registration. However, HBO do have the opportunity to appeal – so watch this space!
This case goes to show the importance of putting together a strong trade mark application from the very start, which sufficiently covers all the goods and services your mark will cover.