Reputable trademarks enjoy enhanced protection to prevent third parties from taking undue advantage of that reputation even if the services or products are not similar. The reason: to protect the investment made by trademark owners. But how far should this protection go? We analyze the case of Game of Thrones vs Game of Döner.
We could start this post by talking about what Game of Thrones is, but, as the opposition division of the European Intellectual Property Office (EUIPO) concludes, we are dealing with a reputed trademark that identifies not only the title of the famous series, but also the business origin (spoiler: this statement can be key in the protection of literary and audiovisual works). Although this is one of the relevant points analyzed by the EUIPO, this resolution gives us other elements that shall be taken into account in any document that is submitted to the Office. Let’s see what happened.
Background
On 22 November 2023, Can Yildiz applied to the EUIPO for the registration of trademark number 18954449 Game of Döner for franchise services or related to restaurants, restaurant services, fast food bars and licensing of industrial and intellectual property rights. In response to this application, HBO filed an opposition based on Article 8.5 EUTMR, alleging the reputation of the European Union trademarks that protect the Game of Thrones sign for entertainment and television programs. The conflicting signs are as follows:
The resolution reminds us of what we must prove to appreciate that we are dealing with a prohibited use of a reputed trademark, all of which are cumulative requirements:
- The reputation of the earlier mark not only before the date of application of the disputed mark, but also at the time of filing the opposition. In addition, this reputation must refer to the goods or services in question and in the specific territory.
- The existence of an identity or similarity between the signs.
- Risk of damage, i.e. the existence of an undue advantage (the so-called free-riding) or damage to the distinctive character or reputation of the earlier trademark. Although it is not a requirement per se, our courts confirm that it must also be proven whether the relevant public will establish a link or association between the signs.
- Absence of due cause.
What elements should we have in terms of proving a brand’s reputation?
At this point, we can draw a series of relevant conclusions when determining the evidence we need to prove the reputation of a trademark:
- Market share and sales: in this case, through a statement or affidavit from HBO it was proven the countries where the series was broadcast, number of viewers, distributors of the series, etc.
- Awards and nominations, ratings.
- Appearances in the press and other media (physical or digital).
- Use of the trademark on the products or services in question (i.e., merchandising, video games, etc.) and sale through platforms.
- Investment in marketing and advertising.
- Impact on social networks, including number of followers, likes to publications, influencers, etc.
- Wikipedia: the EUIPO reminds us that, although Wikipedia is a valid medium, its content must be corroborated with other evidence provided.
- List of trademarks or other industrial and intellectual property rights.
- Market research (although, in this case, it was not used).
What does the EUIPO tell us about this pieces of evidence?
The EUIPO is clear: the evidence has to be dated and provided to the procedure. The mere references are not enough. In addition, it concludes that the inclusion of URLs in the submissions or documents is not valid, and the prints or screenshots of said web pages must be provided to be considered an element of evidence. It is very important to ensure that the content has not been modified and that it existed at a certain time. How can we do this? Using qualified time stamps.
Comparison between the signs
As we have anticipated, EUIPO concludes that Game of Thrones is renowned, at least, for entertainment programs. Analyzing the signs in conflict, it also gives us a series of notes of great relevance.
The EUIPO confirms that: (i) “döner” is understood by EU consumers to refer to the dish of Turkish origin, mainly because its terms in other EU languages are identical or similar; and (ii) the preposition “of” and the sign “game” are understood by a large part of the non-English-speaking public.
Likewise, the fact that both signs use a similar typography with a horizontal line on the “T” in “thrones” and on the “o” – which, although “decorative in nature, are memorable as not being banal or otherwise commonplace” – makes them visually similar.
And what about dragons?
Daenerys should be proud: dragons, emblem of House Targaryen, have been key in determining the existence of an association between the signs. The use of a shield with a dragon in Game of Döner makes it directly related to the plot of Game of Thrones. In addition, the fact that Game of Thrones has become a franchise of significant value means that there is an indirect connection to the controversial services that harms the possibility of monetizing and commercially exploiting said franchise. The conclusion is that the relevant consumers are going to establish an association between both signs.
Finally, although it is not necessary to reliably prove the existence of the damage, it must be established by circumstantial evidence. In this case, the EUIPO concludes that this damage exists because, in addition to being a well-known trademark and there being a similarity between the signs, the positive and attractive image of Game of Thrones could benefit the services designated by Game of Döner by affecting the economic behavior of consumers. In addition, that image transfer would allow the services to be offered under the sign at issue without incurring any licensing or publicity costs.
In conclusion, Game of Döner cannot coexist with Game of Thrones.
The fact of having a reputed trademark does not imply the existence of an absolute right, and special attention must be paid to what and how the evidence is provided to prove that reputation. In addition, it is necessary to be careful and explain why each and every one of the requirements of article 8.5 EUTMR are met. It is not enough to have a brand, but you have to know how to defend it. As Tyrion Lannister said, “Never forget what you are. The rest of the world will not. Wear it like armor, and it can never be used to hurt you.”
