HBO fails to kill ‘Game of Stones’ ale TM
US TV network Home Box Office (HBO) faced defeat last week, after failing in its opposition to a trademark for ‘Game of Stones’ before the UK Intellectual Property Office (IPO).
As the owner of the “Game of Thrones” series, HBO took issue with an applied-for trademark featuring the phrase “Game of Stones” and a ring of standing stones.
UK-based brewery company Wadworth applied for the mark, which covers ales, porter, stout and flavoured beers, in August 2017.
HBO opposed the application, claiming that the applied-for mark is too similar to its own marks, that use of the ‘Game of Stones’ mark would “inevitably ride on the coattails” of HBO’s reputation and would cause misrepresentation.
In its opposition, the TV network cited two trademarks: European word mark ‘Game of Thrones’, which covers beer in class 32, and European logo ‘Game of Thrones Ascent’, which covers online games in class 41.
But, on Tuesday, February 5, the IPO rejected HBO’s arguments, and allowed the trademark to proceed to registration.
Mark Bryant, on behalf of the IPO, found that some of the respective goods covered by each mark were identical and that the marks share some similarity because of the common occurrence of a three-word phrase that shares the same first two words “Game of ….” and a third word that ends -ones.
However, Bryant added that the other elements present in the applied for mark were absent in HBO’s mark so there was a low level of visual similarity. The IPO went on to find a high level of aural similarity between the marks, but a reasonably low level of conceptual similarity.
“The high point of the opponent’s case rests where the respective parties’ beer is
purchased in a pub or bar where aural considerations may play a part. Whilst the marks share a high level of aural similarity, such purchases are rarely done solely by
way of an aural request,” said Bryant.
He added that consumers are likely to see the pump handle label so the visual and conceptual differences will be “readily obvious”, meaning that there is no likelihood of confusion.
HBO also contended that the applied-for mark would take unfair advantage of the network’s trademarks.
A witness statement from Judy McCool, senior vice president of legal affairs at HBO, noted that in the UK, the “Game of Thrones” series has grown steadily and for the season six premiere, viewing figures were estimated to be 2.2 million. The season seven premiere had nearly 3 million viewers.
However, the IPO found that HBO doesn’t have the requisite reputation upon which it could base an opposition.
The office also dismissed HBO’s claim of passing off.
“Taking all of this together, it is my view that whilst the applicant’s mark may bring the opponent’s sign fleetingly to mind, it will not lead to misrepresentation,” said Bryant.
HBO was ordered to pay £1,050 ($1,355) in costs to Wadworth.
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