Marks and Spencer v Aldi – Colin v Cuthbert
M&S has launched trade mark infringement proceedings against Aldi over their famous caterpillar cake.
The US television networking Home Box Office, Inc (HBO) has recently been unsuccessful in its opposition to the registration of GAME OF VAPES as a UK trade mark.
The applicant, Maanmohan Singh, filed a UK trade mark application on 24 April 2017 for GAME OF VAPES (figurative) in class 34 for tobacco, smokers’ articles, matches.
HBO, who produce the popular television series Game of Thrones, opposed the application on the basis of their earlier European Union Trade Mark registration (EUTM) for GAME OF THRONES in several classes, including class 34.
HBO argued that the later mark is similar to the earlier mark and covers identical and similar goods and services. Moreover, they argued that the earlier mark enjoys a reputation and that use of the later marks may dilute the distinctive character of the mark and may cause damage to its reputation. The opponent also argued that the marks are likely to amount to a misrepresentation because of their similarities, which would mislead consumers into believing that the opponent and applicants were connected in some way.
In order to claim that a mark may give rise to a likelihood of confusion, the following must be shown:
– The mark applied for must either be identical or similar to an earlier mark, covering identical and/or similar goods and/or services to those covered by the earlier mark, and
– There must exist a likelihood of confusion on the part of public, which may include a likelihood of association with the earlier mark.
In this case, the UK Intellectual Property Office acknowledged that the goods of the application were identical and similar to the goods and services covered by the registration. The channels of trade through which both entities would distribute their products under the marks were also held to be the same.
However, in its assessment of the comparison of the marks at issue, the UK IPO as relied on the interdependency principle, which states that conceptual differences between signs may counteract the visual and phonetic similarities between them.
It was held that the marks at issue were visually and phonetically similar to the extent that they both contained the identical elements GAME OF. However, the marks differed in respect of the THRONES and VAPES elements. Thus, the marks were held to share a conceptual similarity to the extent that they both denoted the idea of a game, due to the identical use of the GAME OF elements. However, the identical terms GAME OF are qualified by the remaining terms in the marks. It was held that the word THRONES would be understood as referring to Kings and Queens, which is completely different meaning to that which would be gleaned from VAPES, i.e., devices containing flavoured stream and nicotine. The marks were held to have no overall concept in common beyond the fact that they both refer to games. Therefore, there was no rise of direct confusion.
In terms of whether the later mark may give rise to indirect confusion, i.e. where consumers may notice the differences between the marks but also perceive there to be some form of economic connection between the marks due to their shared common elements, it was held that the later mark GAME OF VAPES would not be perceived as a natural “brand extension” of the earlier mark. This is because it conveys a different conceptual idea to that of the earlier mark. Furthermore, the opponent did not have a family of “GAME OF” marks, which may have supported the argument that the later mark may be seen as being an extension of its GAME OF marks. It was held that the later mark may bring to the mind of consumers the earlier mark. However, it is established in law that mere association is not sufficient show confusion.
With regard to the reputation of the GAME OF THRONES mark, it was held that the evidence provided showing use of the GAME OF THRONES mark displayed a reputation of the mark that was limited to the TV show, Game of Thrones. The reputation, thus, did not extent to other activities. Therefore, the claim that the later mark may dilute the distinctive character of the mark and cause damage to its reputation was dismissed.
It was held that the earlier mark enjoys a significant amount of goodwill. Therefore, consumers may, upon viewing the GAME OF VAPES mark, be reminded of Game of Thrones. However, it was held that consumers would not be likely to perceive GAME OF VAPES as emanating from the same source as, and thus economically connected to, the earlier registration. Instead, consumers would be more likely to perceive the later mark was “a comedic play” on Game of Thrones.
While the GAME OF THRONES mark has been used on a wide variety of merchandise, it has always been used as Game of Thrones with no variations on the name or theme. It was also held that there was no “commonality between the respective fields of activity” between the applicant and the opponent; although this was not essential to prove that the applicant was passing off the goods under its mark as originating from the earlier mark, it was held that this further suggested that the use of the mark would not amount to a misrepresentation as being economically connected to the earlier mark.
HBO is unlikely to have any interest in smoker’s articles, but sought registration of GAME OF THRONES for those goods as a defensive measure. Defensive trade mark registrations can usefully expand protection for a brand and it’s an approach which is often employed. In this case it did not enable HBO to succeed against Mr Singh. There are limits to trade mark protection!
Other techniques can be employed to increase the scope of trade mark protection. One is to seek to register elements of a trade mark separately. Mr Singh might well have not succeeded if faced with a registration of GAME OF.
When attempting to extend protection through defensive registrations and/or separate registration of parts of a mark it’s often necessary to take additional steps to ensure that those rights remain valid. We frequently advise on maximising trade mark protection and best practice in using trade marks.
If you have any questions relating to the specific issue of trade mark reputation, or any other trade mark matter, please do not hesitate to get in touch with one of our attorneys.