Ale’s well that ends well

23rd Apr 2019

The HO determined HBO’s defence was too weak, explains Dale Carter. O/072/19, Wadworth Game of Stones (Opposition), UK IPO, 5th February 2019.

Ale's well that ends well

O/072/19, Wadworth Game of Stones (Opposition), UK IPO, 5th February 2019

Key points

  • Evidence of use of a mark for the purpose of establishing enhanced distinctive character or reputation requires the mark to have been used for the registered goods/services
  • Initial interest confusion may amount to misrepresentation
  • Comical parody falls short of deception within the context of passing off

Wadworth and Company Ltd is a family-owned brewery in Wiltshire, the county that is home to the stone circles of Avebury and Stonehenge. Inspired perhaps by its surroundings, Wadworth launched a golden ale called “Wadworth Game of Stones” and filed a UK trade mark application for a beer-pump label, covering class 32 goods.

Home Box Office, Inc (HBO) opposed Wadworth’s application, relying on the following grounds: 

  1. a likelihood of confusion with its earlier registrations, including the word mark GAME OF THRONES, registered for “beer” in class 32;
  2. unfair advantage of and detriment to the repute and distinctive character of HBO’s GAME OF THRONES marks in the UK; and
  3. the law of passing off.

Strongest case

Although HBO’s registrations were not subject to proof of use and could be considered across the full breadth of their specifications, in deciding the opposition under s5(2)(b) of the Trade Marks Act 1994, the Hearing Officer (HO) considered HBO’s strongest case only, namely its word mark registration covering identical goods.

When analysing Wadworth’s mark, the HO noted that the stone-circle device and the word WADWORTH each had individual distinctive character. However, due to their size and central position, the words GAME OF STONES were the dominant distinctive element. This element shared a high degree of aural similarity with HBO’s mark, which was particularly relevant where the purchasing act involved a spoken request. There were significant visual and conceptual differences between the marks, leading the HO to conclude that the level of visual and conceptual similarity was low. The HO reasoned that the average consumer was the beer-drinking general public, who would exhibit a normal level of attention when purchasing the goods. In dismissing HBO’s s5(2)(b) ground, the HO concluded that beer was rarely purchased solely by way of an aural request. The visual and conceptual differences were enough to offset the aural similarities between the marks and remove a likelihood of confusion. 

HBO filed evidence of reputation in its GAME OF THRONES television series in the UK. However, as none of this evidence related to the services for which HBO’s earlier mark was registered, it could not be relied on to support a claim to reputation. HBO’s s5(3) ground was therefore rejected. 

Passing off

HBO argued that Wadworth had imitated its mark and that this would lead to initial interest confusion (ie misrepresentation) and damage. The HO agreed that the GAME OF THRONES mark has significant goodwill in the UK for television entertainment services. However, Wadworth’s intent to deceive was far from obvious. Although Wadworth was likely to have taken inspiration from HBO’s mark, this was a parody and not an attempt to mislead consumers. In dismissing HBO’s initial interest confusion argument, the HO was mindful of there being no common field of activity. At best, HBO’s mark would be brought to mind, but the connection was weak and an insufficient proportion of the relevant public would be deceived. 

This decision highlights the importance of protecting marks for the goods and services for which they are being used. HBO’s evidence of use for the purposes of s5(3) fell outside its registered specification of services. This led to HBO’s arguably most powerful ground of opposition being dismissed for a failure to substantiate its rights.

Dale Carter is a Chartered Trade Mark Attorney and Senior Associate in Reddie & Grose LLP’s trade marks team