29/05/2019
HBO hit a stone wall enforcing their GAME OF THRONES trade mark against a UK brewery
HBO have had a notoriously tough time dealing with the IP fallout from the immense success of their hit TV show Game of Thrones. The show has topped the list of most pirated TV shows for years running, even in 2018 when no new episodes were released. The first episode of the most recent season, which aired on 14 April, was downloaded 54 million times in the first 24 hours since its release. This is in comparison to the 17.4 million viewers who tuned in to watch it on HBO or streamed it on HBO’s on demand services.
In the long hiatus between Season 7 and 8, HBO have been kept busy with IP issues of a different nature. The reputation that HBO enjoy in their Game of Thrones television show has encouraged other traders to take a nod to its title in their own branding. While HBO have often taken steps to address this, they have not always been successful.
One recent example is the opposition HBO lodged against a UK trade mark application filed by Wiltshire-based brewers Wadworth and Co. The application was for a figurative trademark (of the sign that clips onto a beer pump handle) which depicts a circle of standing-stones beneath the word WADWORTH and above the words GAME OF STONES. The application was for “beers, ales, porter, stout flavoured beers”.
HBO raised three grounds of opposition. They alleged that:
- the mark of the application would lead to a likelihood of confusion with their GAME OF THRONES mark;
- that it would be detrimental to or take unfair advantage of the reputation and distinctive character of their mark; and
- that it would amount to Wadworth passing off their goods as those of HBO.
HBO relied on a UK trade mark registration for the words GAME OF THRONES that covered “beer” and other goods. They also relied on a UK registration for a figurative trade mark featuring the words “GAME OF THRONES – ASSENT” (the name of a strategy video game) that covered “providing online interactive multimedia games” and “providing on-line, non-downloadable virtual goods, including, food and beverage products”.
Likelihood of confusion
In assessing the likelihood of confusion between the marks, the Hearing Officer decided to proceed with the GAME OF THRONES word-mark, as it was registered for identical goods to those of the application. In their analysis of Wadworth’s mark the Hearing Officer noted that the stone-circle device and the word WADWORTH each played a distinctive role, but the dominant distinctive element was the words GAME OF STONES. This element had a high degree of aural similarity with GAME OF THRONES.
The aural similarity was of particular importance because the purchasing act for the goods in question, which would involve a spoken request to bar staff, and potentailly in a noisy environment. ‘As an average consumer of beer’, the Hearing Officer reasoned, ‘my experience is that beer may be ordered in a number of ways’: the consumer may ask for a pint of ‘Wadworth’, or alternatively a pint of ‘Game of Stones’. It was less likely, but still possible, that they may request a ‘Wadworth Game of Stones’. Two out of these three are highly similar to HBO’s mark.
HBO claimed that the consumer was more likely to confuse the Wadworth mark with the HBO mark because of the extensive use they had made of their mark in relation to beer. In support of this argument they submitted evidence that the mark had been licensed for use on beer products, however, this evidence related only to licenses in the USA and so did not show that the UK consumer would make any such connection.
In a global assessment, it was decided that the visual and conceptual dissimilarities between the marks outweighed the aural similarities. There was no likelihood of confusion.
Unfair advantage
The Hearing Officer next addressed HBO’s reputation based arguments. HBO argued that Wadworth were free-riding off the reputation that GAME OF THRONES enjoys in the UK.
To succeed with this argument HBO needed to show that their GAME OF THRONES mark has a reputation in the UK and that in calling the GAME OF THRONES mark to the consumer’s mind, Wadworth’s GAME OF STONES mark will derive a commercial advantage by exploiting the huge marketing effort through which HBO have made their GAME OF THRONES mark so prestigious.
To prove this they submitted an abundance of evidence relating to the immense popularity and acclaim of their television series. However, this did not amount to anything because neither of the registrations that they relied upon in this opposition covered entertainment services relating to a television show. The closest was entertainment services relating to online games, and the evidence did not show that HBO’s reputation extended to these services. The second ground of opposition failed as well.
Passing Off
In order for HBO to be successful in their passing off claim, their third and final ground of opposition, they needed to show that they have goodwill in their GAME OF THRONES mark in the UK, that Wadworth are misrepresenting their goods as those of HBO, and that there is a likelihood that this will cause damage.
While the Hearing Officer had no doubt that HBO own substantial goodwill in the GAME OF THRONES mark, they considered that it was clear that Wadworth had no intention to deceive consumers. The Wadworth mark was considered to be merely a parody of the GAME OF THRONES mark that imitated its style for comedic effect. The Wadworth mark will bring the HBO mark to mind, but it is unlikely that consumers will believe there to be a connection between the GAME OF THRONES television show and the GAME OF STONES golden ale.
The name of the game
The lesson here is not to assume that your registration will suffice for the use you want to make of it. In HBO’s case, their registration did not cover the essential services that they can prove an immense reputation for. If they had been able to rely on these services, the opposition may well have had a different outcome.
If you are fortunate enough to own a mark with a reputation as substantial as GAME OF THRONES, always lead an opposition with the registration that covers the reputed goods and services. Don’t assume that the registry will do the work for you and reach conclusions that are not borne out by the pleadings just because the mark is famous (as McDonald’s recently found out).
Trade mark owners can also be caught out when trying to enforce registrations that they secured some years ago. Trade mark protection should be kept up to date so that any new commercial undertakings are covered. Then, when it is needed, it can be relied upon to reflect the goods and services that are actually offered.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
