HBO, which broadcasts the award-winning “Game of Thrones” series, was unsuccessful in their opposition to a Wiltshire brewer’s “Game of Stones” trade mark application. Not even an enterprise with 7 kingdoms and 3 fire breathing dragons will always win a trade mark war. For Throne fans, given the dispute relates to beer, it could be called the battle of the bar stewards…

Winter is coming

To celebrate the heritage of their Wiltshire home aka “land of stone circles”, Wadworth and Company Limited (Wadworth) started to brew and sell “Game of Stones” golden ale. In August 2017 they applied to register a trade mark for a logo for their beer.

Game of Thrones is HBO’s most successful television series so it is unsurprising that they have numerous EU word and logo trade marks for “GAME OF THRONES” protecting a wide range of goods and services.

HBO opposed Wadworth’s application, relying on some of their earlier marks and s.5(2)(b), (3) and (4)(a) of the Trade Marks Act 1994. HBO’s opposition was rejected.

Whilst HBO now have the opportunity to appeal this decision, what hurdles will they have to overcome to succeed on appeal?

s.5(2)(b) – Similar mark for identical goods

For this ground of opposition, HBO relied on their “GAMES OF THRONES ASCENT” logo mark registered in July 2013 and “GAME OF THRONES” word mark registered in December 2016, the latter of which covered beers. So, the goods offered under both Wadworth’s application and HBO’s word mark are identical.

The Hearing Officer acknowledged that the distinctive elements; “GAME OF THRONES” and “GAME OF STONES”, have a high level of aural similarity. However, with the standing stones image in Wadworth’s logo, the conceptual difference between “STONES” and “THRONES” would be easy for the average consumer to grasp. Additionally, the average consumer here is the beer drinking general public who are likely to see the pump handle, baring the image of standing stones, when purchasing their pint. On that basis, they ruled there was no likelihood of confusion and the opposition failed.

HBO also argued that as they licence their marks for Game of Thrones branded beer in the USA, their mark had an enhanced distinctive character in for beer. However, as they have not done so in the UK the average UK consumer would not associate them with beer – watch this space for a potential new GoT pint in UK bars.

s.5(3) – Reputation and distinctive character

Relying again on their “GAMES OF THRONES ASCENT” and “GAME OF THRONES” marks, HBO argued that Wadworth’s application would be detrimental to and take unfair advantage of their marks’ reputation and distinctive character.

Game of Thrones has had global success and is available, under licence from HBO, on Sky in the UK. It has run for seven seasons, attracting nearly 3 million UK viewers for the season seven premiere – there can be no doubt of its popularity. However, crucially the reputation of the marks, to be relied upon must be established in relation to the goods or services for which it is registered.

Surprisingly, neither HBO’s “GAMES OF THRONES ASCENT” logo or their word mark, are registered in classes covering entertainment services such as television series. That means that these marks are registered in connection with goods and services in which Game of Thrones does not have a reputation. On that basis, the Hearing Officer rejected HBO’s unfair advantage and detriment arguments – albeit clearly the series has a huge reputation and so HBO also relied on their goodwill as part of their battle.

s.5(4)(a) – Passing off and goodwill

In addition to the logo and word marks, HBO included their “GAME OF THRONES” logo mark registered in April 2011, and the goodwill therein for their challenge under s.5(4)(a). This latter mark is registered in Class 41 for entertainment services in the nature of an ongoing television series.

In considering HBO’s arguments the Hearing Officer acknowledged that they had significant goodwill in their television series in the UK. However, Wandworth’s mark would, at most, bring HBO’s marks fleetingly to mind. This would not lead to misrepresentation that the two were associated as the connection between beer and television services was too weak. The Hearing Officer commented that this was an attempt at parody rather than an attempt to deceive. The opposition therefore also failed on this ground.

Next steps?

HBO can appeal the decision before the Wadworth’s logo is registered as a trade mark. Whilst on some grounds they may fail to get over the wall, the huge reputation of the Game of Thrones means that they could still win the longer battle. It will be interesting to see whether HBO do appeal the decision, not least as a warning to others who may wish to benefit from association with their global success and grab a piece of the lucrative merchandise market.

A Lannister always pays his debts

It may seem surprising that the opposition failed given the success of the television series and huge reputation in the GoT brand. However, this decision highlights the importance of getting your trade mark specification right and broad enough at registration. Also, if you are seeking to rely on your mark’s reputation in opposition, you need to ensure that you have evidence of that reputation in both the geographical location in which you are seeking to enforce your rights and in the goods and services the mark is registered against.

With the much anticipated final season starting soon, it will be interesting to see whether a parallel battle for the “trade mark” iron throne will play out in the real world and which “bar steward” will prevail.