TV production company HBO, producer of the hit TV show Game of Thrones, has failed in its attempt to oppose the registration of two trade marks: ‘Game of Vapes’ and ‘Game of Stones’.

In two separate late 2018 hearings before the UK Intellectual Property Office HBO’s oppositions to the registration of the marks was refused.

BACKGROUND

The initial application for ‘Game of Vapes’ was made by Maanmohan Singh in April 2017 for class 34 (Tobacco, Smoker’s articles: Matches). The ‘Game of Stones’ application was made by Wadworth and Company Ltd. in class 32 (Beers; Ales; Porter; Stout; Flavoured beers).

Three primary arguments were raised by HBO in each opposition that concerned the relative grounds for refusal located under s. 5 of the Trade Marks Act 1994, particularly ss. 5(2)(b), 5(3), and 5(4)(a). the law is set out as follows:

– 5(2)(b) states a trade mark shall not be registered if, because it is identical to an earlier trade mark and to be registered for similar goods or services, there is a likelihood of confusion on the part of the public.

– 5(3) provides that a trade mark shall not be registered if it is similar to an earlier mark which has a reputation in the UK, such that its use would unfairly capitalise on, or be detrimental to, the distinctive character of the earlier mark.

– 5(4)(a) relates to the law of passing off, the common law action by which a trader’s goodwill (that being ‘the attractive force which brings in custom’, per Lord McNaghten in IRC v Muller & Co’s Margarine [1901]) is protected from harm caused by a misrepresentation by the defendant. In the event that such an action by the claimant be capable of succeeding, under s. 5(4)(a) the trade mark therefore cannot be registered. The section effectively operates to adjoin the two areas of law, offering an additional level of protection for businesses beyond just the statutory mechanism.

ANALYSIS

With the first ground under s. 5(2)(b), there was little doubt that the goods covered by both applications were similar to those covered by HBO’s mark. Moreover, the visual and aural similarities were also established to some extent, although less so with ‘Game of Stones’ due to its different text font and more distinct background. In any case, the conceptual differences between the applicants’ marks and HBO’s mark were sufficiently dissimilar to conclude there was very little risk of confusion amongst the public – the ‘Game Vapes’ and ‘Game of Stones’ marks compared to the ‘Game of Thrones’ mark express totally different concepts beyond simply the idea of a game being played. As a result, there was deemed no risk of confusion in either case, only mere association which is insufficient.

In regards the second ground under s. 5(3), what was first considered was the distinctiveness of HBO’s mark. While HBO produced evidence of the mark’s use in merchandising, it was ultimately insufficient to establish it had a reputation in this regard. The reputation was limited to their television show, and did not extend to additional activities beyond this.

The ground under s. 5(4)(a) relating to passing off also failed, as the UKIPO determined that there was insufficient evidence to prove the existence of a misrepresentation that deceived consumers.  While the association in the minds of consumers would likely occur, it was thought that this would not operate to actively deceive the consumers into thinking they were purchasing products created or endorsed by HBO. Even an initial confused association would quickly diminish into an appreciation that the marks are simply parodies of ‘Game of Thrones’, and thus there was insufficient evidence to establish the necessary misrepresentation and potential for damage to HBO’s goodwill in both cases.

As a result of the loss, HBO had been ordered to pay damages contributing to the cost of the proceedings: £800 in the ‘Game of Vapes’ case, and £1,050 in the ‘Game of Stones’ case.

It might be thought that the company behind one of the biggest TV shows in history would be able to succeed in any claim they made concerning infringement of their intellectual property, but it goes to show the difficulty that businesses might have when it comes to ensuring protection in this regard.