In a recent decision, the European Union Intellectual Property Office (EUIPO) ruled in favor of Home Box Office, Inc. (HBO), disqualifying the trademark application for Game of Döner on the grounds that it would unfairly benefit from the reputation of the well-known Game of Thrones trademark.
The EUIPO’s opposition division recently addressed a trademark dispute involving HBO’s Game of Thrones and a German applicant’s attempt to register Game of Döner for fast-food services.
The decision underscores the protection afforded to trademarks with a reputation under article 8(5) of the EU Trade Mark Regulation (EUTMR).
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Background of the case
The applicant sought to register Game of Döner as an EU trademark for services in classes 35, 43, and 45.
HBO opposed the application, arguing that the use of Game of Döner would take unfair advantage of the reputation of its Game of Thrones trademark.
Legal framework: article 8(5) EUTMR
Article 8(5) EUTMR provides that a trademark shall not be registered if it is identical or similar to an earlier trademark with a reputation, and if the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
Assessment by the opposition division
Reputation of the earlier mark
The opposition division acknowledged that Game of Thrones enjoys a high degree of reputation within the EU, particularly in relation to entertainment services.
HBO provided substantial evidence, including numerous awards and widespread merchandising, to support this claim.
Similarity of the signs
The signs Game of Thrones and Game of Döner were found to be visually and aurally similar to a certain degree.
Both share the distinctive phrase “Game of,” and the use of similar typography and imagery, such as a dragon emblem, further contributed to the perceived similarity.
Link between the marks
The division determined that the relevant public would likely establish a connection between the two marks, given the similarities and the reputation of Game of Thrones.
The use of a dragon in the Game of Döner logo was particularly noted as reinforcing this link.
Unfair advantage
It was concluded that the applicant would gain an unfair advantage by leveraging the reputation of Game of Thrones without making the necessary investments.
This would allow the applicant to benefit from the positive associations of the earlier mark, constituting an unfair advantage.
Conclusion
The EUIPO’s opposition division refused the registration of Game of Döner for all the classes it sought registration, citing the unfair advantage it would gain from the reputation of Game of Thrones.
Implications for trademark strategy
This case highlights the importance of conducting thorough trademark searches and assessments before filing applications, especially when the proposed mark bears similarities to well-known trademarks.
Businesses should be cautious to avoid potential conflicts that could lead to opposition proceedings and the refusal of trademark registration.
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FAQ
What is article 8(5) EUTMR?
Article 8(5) of the EU Trade Mark Regulation prevents the registration of a trademark that is identical or similar to an earlier trademark with a reputation if the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
Why was Game of Döner refused registration?
The EUIPO found that Game of Döner would take unfair advantage of the reputation of Game of Thrones, leading to its refusal under article 8(5) EUTMR.
Does the presence of a dragon in the logo affect the decision?
Yes, the use of a dragon, a central element in Game of Thrones, in the Game of Döner logo reinforced the perceived link between the two marks.