Game of Stones v Game of Thrones: brewer’s victory in epic trade mark battle

April 30, 2019, By

Wadworth Brewery has been crowned the victor in a recent, Game-of-Thrones-inspired, trade mark battle against the infamous US television network, HBO.

The Wiltshire-based brewery, founded in 1875, launched its ‘Game of Stones’ pale ale in August last year. With a view to protecting the brand, Wadworth filed a UK trade mark application for the below mark, seeking to protect it in connection with various types of “beers”:

The application was examined by the UK Intellectual Property Office (UKIPO) and was then accepted for publication.

However, not all went to plan.

Following the mark being published in the UK Trade Marks Journal, HBO filed an opposition to the application in the hope of preventing it from registering. HBO based its opposition on two pre-existing UK trade mark registrations: one for the mark ‘GAMES OF THRONES’ (word) and the other for a figurative mark featuring the same words.

In its submissions, HBO argued that Wadworth’s mark was: i) confusingly similar to HBO’s marks; and ii) in any case, that Wadworth’s use of the mark would allow it to unfairly benefit from the reputation of HBO’s marks. It also argued that use of Wadworth’s mark would dilute the distinctiveness of HBO’s pre-existing trade marks.

Fortunately for Wadworth, none of these arguments were successful.

In assessing HBO and Wadworth’s submissions, the UKIPO took the typical approach of comparing the marks for visual, aural and conceptual similarities.

It held that the marks were visually distinct; Wadworth’s marks contained dominant visual elements (such as the stone circle) which differentiated it from HBO’s marks.

It also held that, conceptually, the marks were dissimilar; although both contained the words ‘GAME OF ‘something’’, the words ‘thrones’ and ‘stones’ were considered to sufficiently dissimilar as to avoid confusion.

The UKIPO considered the marks to be similar from an aural perspective. However, it did not consider this similarity alone to be enough to create a likelihood of consumer confusion between the marks.

The UKIPO also found that, although Wadworth’s mark may have taken inspiration from HBO’s marks and the Games of Thrones TV show, the use of the ‘GAME OF STONES’ mark was not intended to deceive the public that the beer originated from, or was connected with, the TV show.

Briffa Comment

So what does this tell us?

Firstly, it shows that smaller businesses are not automatically at a disadvantage simply because of their size. All that should matter is the strength of a business’ case and its ability to fund its legal battle.

Secondly, it confirms that being able to demonstrate that two marks share some similarities (in this case, aural similarity), this is not always sufficient for those marks to be found to be “confusingly similar” and therefore ineligible for registration. The similarity between two marks must be enough to result in a likelihood of consumer confusion arising; marks will not be deemed to create such confusion unless they do so overall, taking into account the dominant and most distinctive elements of those marks. In the current case, the additional visual elements within Wadworth’s mark were deemed to sufficiently differentiate them from HBO’s marks.

Further, it shows that the goods and services for which a trade mark is filed will always be a relevant factor. Had Wadworth’s mark been filed for “entertainment services” or services related to the “production of TV shows”, the outcome of this case may have been different. However, given that Wadworth’s mark had been filed for various types of “beers”, consumers are less likely to be confused between the two given that the sectors in which they are used differ significantly.

If you have a trade mark issue, please contact Tom Broster on [email protected] to discuss further.

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