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This article is written by Vikash Dhaka pursuing Diploma in Intellectual Property, Media, and Entertainment Laws from LawSikho.com.

Introduction

Game of Thrones is an American drama series that premiered on HBO. The series is widely appreciated and applauded by millions of people all over the world. Game of Thrones has won many hearts and awards including the BAFTA, Golden Award, Emmy Awards, etc. People are crazy with the name of the series and all the intellectual property rights rest with HBO. Home Box Office (HBO) is the American television network where Game of Thrones premiered. The name of the series Game of Thrones has a very high IP value because of its popularity. HBO has all IP rights including the trademark.

Wadworth is a Brewery Company that makes and sells beer in the United Kingdom. Wadworth launched a pale ale named ‘Game of Stones’. Pale ale is one of the kinds of beer. Wadworth filed a trademark application for ‘Game of Stones’ in the UK seeking to protect the name of the beer. The United Kingdom Intellectual Property Office(UKIPO) accepted the application. But HBO applied to oppose the registration of the trademark ‘Game of Stones’ claiming the similarity between Game of Thrones and Game of Stones. The mark ‘Game of Thrones’ sells beer in the US.

Maanmohan Singh applied to register the trademark ‘Game of Vapes’. ‘Game of Vapes’ deals with smoking and tobacco products etc. HBO has also registered the name ‘Game of Thrones’ for smoking products. So, HBO files a suit for trademark infringement against the owner of ‘Game of Vapes’.

Game of Stones vs. Game of Thrones

HBO filed a case against Wadworth relying on sections 5 (2)(b),(3), and (4)(a)of the Trademarks Act,1994.

Section 5 (2)(b): Similar mark for Identical goods

HBO has also already registered the mark ‘Game of Thrones’ for beer in the US. Now, Wadworth is selling the beer under ‘Game of Stones’ in the UK. HBO contented that there exists a similar mark for identical goods.

The hearing officer observed that there exists an aural similarity between Game of Thrones and Game of Stones. However, their logos are quite different. The conceptual meaning of the word ‘stones’ and ‘thrones’ vary and help the public to distinguish the same. The public will not be confused with the name as their logos are different. HBO further put forth the argument that there exists a mark Game of Thrones for beer in the US. The hearing officer reacted that such a mark doesn’t exist in the UK and people of the UK will not connect the Beer of Game of Stones with Game of Thrones.

Section 5 (3): Reputation and distinctive character

HBO contented that there exist a huge number of viewers in the UK for the series Game of Thrones. HBO has given the license to SKY in the UK for airing the Game of Thrones. Wadworth’s application will take undue advantage of its mark, reputation, and fame.

However, the hearing officer said that there is no doubt that Game of Thrones enjoyed great popularity and fan following. But it is limited to a series of television channels and the people who are connected to the series. So, for other goods and services, the mark Game of thrones is not that famous.

Section 5 (4)(a): Passing off and goodwill

HBO contended that the goodwill of the television series Game of Thrones is misused or jeopardized. The hearing officer, however, held that there exists goodwill for the television series but the relationship between Wadworth’s beer and the series is very weak. The people may not connect the beer with the series. At most, the people can have a glimpse of the series but Wadworth has used the word as a parody rather than an attempt to deceive the people.

Game of Vapes vs. Game of Thrones

HBO filed the opposition against the Game of Vapes under the section 5 (2)(b),(3) and (4)(a)of the Trademarks Act,1994.

Section 5 (2)(b): Similarity with the name for identical goods

HBO put forth the opinion that there is a similarity with the name for identical goods. The hearing officer accepted that there exists a similarity between the name and the product but the connotation or meaning is different for Vapes and Thrones. The hearing officer further contended that the conceptual connotation outweighs the similarity with the marks and the general public will not be confused with the name. Although the name ‘Game of’ is unusual but this doesn’t mean there exists an association between the parties.

Section 5 (3): Reputation and distinctive character

HBO contended that there is a very good reputation of the series Game of Thrones and the same is being jeopardized by the Game of Vapes. However, the hearing officer retailed and said that indeed there is a good reputation for the series Game of Thrones but we can’t say the same for other merchandising products. The reputation of the series is limited to the television show. The hearing officer rejected the opposition claim.

Section 5 (4): Key elements necessary for passing off

The hearing officer said that the key elements necessary for passing off are the goodwill, misrepresentation, and damage resulting from the misrepresentation. There is goodwill for the series Game of Thrones but the same is not true to other relevant products. The hearing officer further contended that there is no misrepresentation by the mark Game of Vapes. The general public may get the thought of Game of Thrones but the thought will be eliminated very quickly as there exists no direct connection between the series and product. The consumer will view the mark of Game of Vapes as an attempt to parody than an attempt to deceive. 

HBO lost in both cases

It is quite surprising that HBO has lost the case against Game of Vapes and Game of Stones. Since there is no doubt that Game of Thrones enjoys a great amount of fame and popularity. As a brand, Game of Thrones is the most celebrated one. But it is limited as a television show and doesn’t hold for other merchandising products. The conceptual connotations can outweigh the similarity between the two brands. The above cases are the classic example of the same.

In the case against the Game of Vapes, HBO contended that there is a misrepresentation from the side of the opposition. They want to use their goodwill without their permission. They want the public to have the notion that there exists a license or economic activity between them, which is not true. The UKIPO(United Kingdom Intellectual Property Office) held that there is a medium degree of similarity but the conceptual meaning is altogether different. Further, there is no trademark on the word ‘Game of’, people will take Game of Vapes as an attempt to parody Game of Thrones. So, HBO loses the case.

In the case against the Game of Stones, HBO contended that the marks are very similar and there is an attempt to mislead the people that there exists a relationship between them which is not true. The party wants to take unjust benefits from its registered trademark because of its high popularity and reputation. However, the UKIPO held that there is a very small conceptual similarity between the trademarks and people will not get confused because the words ‘stones’ and ‘thrones’ are significantly different. Further, the UKIPO held that there is an attempt to parody and imitate than an intention to deceive, quashing the passing-off contention made by HBO. There exists an exception under copyright law for parody under Section 30A. Similarly, in trademark there exist an exception of parody in the UK as held in the case of Toys R Us, 2003. So, HBO lost the case again.

Conclusion

Game of Thrones is one of the most celebrated American series. There is no doubt that there is a huge IP value attached to the name of the series. The series is famous not only in America but also in other parts of the world. HBO is the American television network where the Game of Thrones premiered. Indeed, HBO owned all the IP rights in the series Game of Thrones. Because of its high popularity, there are some merchandising products on the name of the series which include beer, cigarettes, games, etc. 

Maanmohan Singh applied to register the trademark ‘Game of Vapes’. ‘Game of Vapes’ deals with smoking and tobacco products etc. Wadworth filed a trademark application for ‘Game of Stones’ in the UK seeking to protect the name of the beer. Both the applications were challenged by HBO under the section 5 (2)(b),(3) and (4)(a)of the Trademarks Act,1994. But, the UKIPO dismissed the opposition filed by HBO on various grounds including that the conceptual meaning outweighs the similarity between the trademarks.

References


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