May 2025 Not even a spicy kebab twist could hold off the winter for Game of Döner — Game of Thrones made sure Game of Döner bent the knee.
Background
Home Box Office, Inc. (HBO), the owner of the trademark “GAME OF THRONES,” contested the registration of the mark “GAME OF DÖNER” before the Opposition Division (OD) of the European Union Intellectual Property Office (EUIPO), arguing that it should be refused under Article 8(5) of the EU Trade Mark Regulation (EUTMR) because the “GAME OF DÖNER” mark would take unfair advantage of the famous “GAME OF THRONES” mark.
HBO’s Earlier Mark “GAME OF THRONES”
The Contested Mark “GAME OF DONER”
Reputation of “GAME OF THRONES” mark
To evaluate the reputation of the earlier “GAME OF THRONES” mark, the OD considered factors relevant to widespread, longstanding and intensive use of the mark e.g. investment made to promote the mark, geographical extent and duration of use.
In view of the evidence submitted by HBO, it is clear that the Game of Thrones TV series was highly popular amongst the EU public. According to the OD, the “GAME OF THRONES” mark is not merely perceived as a title, but also as a trade mark since it has been used in a wide range of different merchandise and events other than the TV series for over 10 years.
The OD therefore concluded that the “GAME OF THRONES” mark has shown a high degree of reputation in the EU and at least in relation to the class of “entertainment in the form of television programmes”.
Similarity
Similarity between the two marks were also assessed. Visually, the marks were found to be similar at least to a below-average degree, and aurally, the marks were found to similar at least to an average degree. The marks were also found to refer to the same concept, i.e. “a game of something”.
Overall, the marks were found to give a similar impression.
Direct Link
The OD also concluded that there is a direct link between the services offered by HBO and the contested services in Class 43 of the “GAME OF DÖNER” mark. Whilst the OD noted that the link between HBO’s services and the contested services in Class 35 and 45 to be “more remote”, it was acknowledged that HBO’s brand expansion practiced outside of the scope of “entertainment in the form of television programmes”.
Furthermore, the OD added that the concept of dragons and knighthood are crucial to the storyline of the TV series, as such, the illustration of a dragon in a shield-like frame in the “GAME OF DÖNER” mark may mislead the consumers in terms of commercial origin and would likely call to mind the famous mark.
Free-riding
When assessing the risk of free-riding, the OD concluded that “the appeal of the earlier mark is undeniable” and it is likely that “the relevant public would be particularly attracted by the positive associations that the Game of Throne series triggers”.
The consumers are therefore likely to “transfer the values of the earlier mark to the services bearing the contested mark”, meaning the owner of the “GAME OF DÖNER” mark be able to profit from its services without making necessary investments by taking an unfair advantage of the “GAME OF THRONES” mark.
Conclusion
In the absence of any due cause submitted by the proprietor for the “GAME OF DÖNER” application, the OD refused registration of the contested mark for all classes.
