HBO with another hit in competition for the Game of Thrones

• Game of Thrones producer Home Box Office Inc (HBO) opposed registration of GAME OF DONER for Franchising services providing marketing assistance, take-away restaurant services and licensing of intellectual property
• Article 8(5) claim satisfied as the mark was deemed to be visually, aurally and conceptually similar to a sufficient degree that there is a risk of injury

Background

The opposition was upheld under Article 8(5) (opposed mark is similar to a mark with a reputation and use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark) of Regulation (EU) 2017/1001. HBO relied on its GAME OF THRONES figurative mark (the Earlier Mark) and its associated reputation and use in television, associated media and merchandise in the opposition.

Reputation

The Opposition Division was satisfied that HBO had proven that its mark had has a reputation throughout the European Union. This was evidenced by the multiple articles, ratings, viewership data, nominations, awards and merchandise to show extensive success and use over the last 10 years with a high degree of recognition as a leading brand throughout the European Union.

Similarity and link between the marks

The Opposition Division found that positioning, stylisation and the overall design of the Sign was visually similar to a below average degree and aurally similar to an average degree to the Earlier Mark due to the similarity in pronunciation of 'GAME OF'. Conceptually, as both the Sign and the Earlier Mark have similar concepts of a game of something drew them closer together. Additionally, the Sign exploited concepts related to the story line of the ‘Game of Thrones’ TV series of the Opponent, with its dragon and shield imagery – overall leading to a finding that the relevant consumers would be likely to associate the Sign with the Earlier Mark.

Risk of Injury

The criteria for a contested mark to fall within Article 8(5) EUTMR requires unfair advantage or detriment to the repute of the Earlier Mark. The Opposition Division determined that the application took unfair advantage of the distinctiveness and widespread reputation of the Earlier Mark, ie it constituted ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation as there was is a risk that the image of the mark with a reputation or the characteristics which it projects would be transferred to services covered by the application, with the result that the marketing of those services is made easier by their association with the earlier mark with a reputation. That image transfer would, therefore, enable the applicant to market its services under the Sign without incurring any costs, such as licensing fees, advertising costs or other costs that would normally involve the placing of a product on the market. Once unfair advantage was found, the Opposition Division did not go on to review other types of injury.

Comment

The case shows where an Earlier Mark has high degree of reputation an opposition can succeed on Article 8(5) grounds even where the opposed application covers dissimilar goods or services to those the Opponent has a reputation in.

With thanks to Arran Cooper-Moxam for co-authoring this article.

A version of this article first appeared in WTR Daily, part of World Trademark Review, in April 2025. For further information, please go to www.worldtrademarkreview.com.