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29 September 2020TrademarksMuireann Bolger

Warner Bros triumphs in Westworld trademark battle at EUIPO

In a victory for Warner Bros, the  European Union Intellectual Property Office (EUIPO) has upheld its opposition to a trademark that infringed IP associated with its television series “Westworld”.

In a decision handed down on September 22, the Fourth Board of Appeal of the EUIPO annulled an earlier EUIPO ruling, which had only granted a partial win to the entertainment company.

In 2018, RoboMoo  Technology applied to register the mark ‘WESTWORLD’ as a European Union (EU) trademark for goods, including software, robotic devices, dolls, electronic equipment and sex toys.

In May 2018, Warner Bros filed an opposition against the registration of the mark for goods based on the law of “passing off”, arguing that the contested sign was identical to an earlier mark held by the entertainment company, and the goods related to a central theme of the opponent’s television series, “Westworld”.

In 2019, the EUIPO upheld this opposition in part, holding that the contested mark did infringe goods relating to virtual reality software; application software; augmented reality software for use in mobile devices; and operating system software. However, only some of the contested goods were held to be similar and each party was ordered to bear their own costs.

In August 2019, Warner Bros filed an appeal against the contested decision, requesting that the board annul the decision, uphold the opposition in its entirety and refuse the contested trademark.

Warner Bros argued that the contested decision misconstrued the relevant law on passing off in the UK and that given the television series is about a futuristic amusement park, in which the host robots are programmed to fulfil human guests’ every desire, it was highly likely that consumers would associate the mark with robots and adult entertainment.

It held that the contested goods for which the opposition was rejected (and in respect of which the appeal is brought) will be perceived as being directly related to the central theme of the television series.

Warner Bros held that it was “inconceivable that the applicant was not aware of the opponent’s rights to the trademark” when it selected the identical trademark applied for, and given the nature of the goods being offered by the applicant under the mark, it was clear that “this was a deliberate misrepresentation” and “a very conscious attempt to associate its goods” with the television series.

It also held Warner Bros was likely to suffer damage as a result of the applicant’s misrepresentation, due to the “distasteful nature” of RoboMoo’s products.

The EUIPO agreed with Warner Bros, stating that: “Given the nature of the television series ‘Westworld’ and its subject matter, its proven reputation in the UK, the nature of the contested goods, and the identity of the contested sign with the earlier sign, on the balance of probabilities the contested mark would be likely to lead the relevant public in the UK to believe that the contested goods originate from, or are authorised by, the opponent.”

It also agreed that the disputed mark “was likely to cause damage to the reputation and distinctive character of the earlier mark, in particular when products which are misrepresented by the sign as being linked to the opponent are of an inferior quality and/or extremely distasteful”.

RoboMoo’s trademark was refused and it was ordered to pay costs.

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