The UKIPO considers similarity of Game of Vapes and Game of Thrones

Maanmohan Singh filed a UK application to register the GAME OF VAPES logo (above left) for goods in class 34.

Home Box Office, Inc ("HBO"), the media company, opposed the application on the basis of its registered and unregistered rights, reputation and goodwill in GAME OF THRONES and the GAME OF THRONES logo (above right). Maanmohan Singh denied all the claims made by HBO.

Only HBO filed evidence, which consisted of a witness statement by the Senior Vice-President of their legal department, detailing the fame of the TV show GAME OF THRONES, the licensing of the show's intellectual property in relation to merchandise and the highly publicised travelling showcase exhibition of the show. HBO also filed details of a previous withdrawn trade mark application filed by Maanmohan Singh.

The goods covered by Maanmohan Singh's application were considered to be of varying degrees of similarity to those covered by HBO's goods in Class 34. Rolling tobacco and cigars were found to be alternatives, potentially in direct competition, and similar to a medium to high degree; matches and lighters were found to be alternatives and therefore similar to a high degree; and smokers' articles were deemed identical to ashtrays and holders for cigars and cigarettes.

HBO's word only mark was found similar to a medium degree to the Applicant's mark, both aurally and visually. As for the difference in meaning of VAPES and THRONES, they were held to have no overall concept in common. This was deemed significant, as the resulting conceptual difference between vaping products and the well-known television show would inevitably lead the consumer to notice the distinction between the marks.

Using the evidence of their merchandising, HBO claimed that its mark enjoyed an enhanced degree of distinctive character. However, the Office concluded that this was true only in the context of the television show, and that the distinctiveness of GAME OF THRONES beyond that activity was not so enhanced.

Furthermore, the fact that HBO did not have a variety of "Game of…" trademarks was evidence that GAME OF VAPES could not be considered a natural brand extension to HBO's mark. The Office went so far as to say that, despite the association with the popular show, the mark was entirely meaningless in respect of the goods and services at issue. As a result of the above, there was no likelihood of direct confusion, and since any connection made between the marks would be purely one of association due to the unusual "game of…" combination, indirect confusion was also not likely.

HBO also argued that it had a reputation in respect of the relevant goods and services, due to its merchandising activities. However, no market information was provided as evidence, and as such there was not enough to suggest that this was a discrete reputation in its own right. The mark's reputation in respect of the goods was inextricably tied and limited to that of the television show.

The Opponent also made a claim of passing off and referred to the previous trade mark application filed by Maanmohan Singh which borrowed heavily from the get up, themes and overall presentation of the television show. This had been withdrawn and the opposed mark differed substantially from it. No evidence of use of the withdrawn mark was presented.

The Office accepted that there was significant goodwill attached to GAME OF THRONES and that this was tied to the television show, but any connection between the two marks at issue was that of parody rather than misrepresentation. The fact that there had been significant change between the withdrawn mark and the later mark was important in showing that there was in fact no misrepresentation. The passing off claim therefore failed.

HBO argued that there would be initial interest confusion caused by the later mark. The Office dismissed this argument, stating that while a consumer may be reminded of "Game of Thrones" by Game of Vapes, they would instantly recognise that it was not the source, and that the latter was a comedic play on the former. This conclusion was again influenced by the fact that all Game of Thrones merchandise was marked as such, without variation in the wording. This claim therefore also failed.

This case demonstrates that, even if a mark has a significant reputation, it may not breach a conceptual gap between it and an apparently similar mark.

Case Ref: O/103/19