Appleyard Lees’ Senior Associate and Chartered Trade Mark Attorney, Beverley Robinson, recently acted for Play’n GO Marks Ltd (Play’n GO) in the successful opposition of four trade mark applications filed by Blueprint Technologies Ltd (Blueprint).
The UK IPO has issued a decision rejecting Blueprint’s four trade mark applications on the basis of a likelihood of indirect confusion with Play’n GO’s earlier trade mark ANKH OF ANUBIS. The marks are set out in the table below for comparative purposes.
|
Play’n GO’s earlier mark |
Blueprint’s applications |
| ANKH OF ANUBIS |
RISE OF ANUBIS Legend of Anubis LEGACY OF ANUBIS ANUBIS RISING |
This decision highlights the importance of policing thematic branding, where indirect confusion can lead consumers to believe there is an affiliation between brands.
The full decision can be read here.
Background
Play’n GO, a leading supplier of gaming entertainment, filed oppositions against Blueprint’s four trade mark applications as set out above, based on s5(2)(b) of the UK Trade Marks Act 1994. Each application included the term ‘Anubis’ and covered gaming-related goods and services.
Play’n GO argued that Blueprint’s applications were for marks highly similar to ANKH OF ANUBIS and that the goods and services were identical or highly similar, resulting in a likelihood of confusion on the part of the relevant public.
Evidence
Blueprint adduced evidence in an attempt to show that Play’n GO’s earlier mark was of low distinctive character in the marketplace and on the register. It submitted that there were already several marks on the register which contain the word ANUBIS. However, the Hearing Officer (referring to the case of Zero Industry Srl v OHIM, Case T-400/06) pointed out that even if the register contains several similar marks relating to the goods and services at issue, that is not enough to establish that a mark is of weak distinctive character. Additionally, the Hearing Officer was not persuaded that the distinctive character of the earlier mark was weakened due to the popularity of a particular themed slot game.
Decision
Comparison of the goods and services
The parties agreed that the goods and services are identical, and this point was not in contention.
Comparison of the marks
The Hearing Officer considered that the terms ‘RISE OF’, ‘Legend of’, ‘LEGACY OF’, and ‘RISING’ acted as qualifiers for the word ‘ANUBIS’. Consequently, it was held that the terms preceding or following ANUBIS were unlikely to significantly impact consumer perception and ANUBIS was found to be the dominant and distinctive element in all four of the applications.
Whilst the differences in Blueprint’s marks were considered to act as points of conceptual difference, the marks were deemed to be overall similar due to the visual and aural similarities arising from the common word ANUBIS.
Distinctive character of the earlier mark
The Hearing Officer determined that ANKH OF ANUBIS had a high degree of inherent distinctive character, as the mark has no specific meaning in relation to the goods and services at hand.
Likelihood of confusion
The Hearing Officer found that there were sufficient similarities between all the marks to result in a likelihood of indirect confusion. Indirect confusion occurs when the average consumer notices that the marks are not the same, but nonetheless considers the marks to originate from the same or economically linked undertakings due to the similarities between the marks and the goods and services. Here, the common element ANUBIS was the dominant and distinctive element in the applicant’s marks and has no obvious meaning to the average consumer. Therefore, the average consumer would consider the differences between the marks (i.e. the ‘qualifiers’) to be alternative marks from the same or economically linked undertakings.
Accordingly, all four of Blueprint’s applications were refused registration, and Blueprint was ordered to pay Play’n GO costs.
Commentary
This decision underscores the importance of selecting distinctive trade marks, particularly in competitive sectors like gaming, and brand owners should consider the following:
- Distinctiveness: A trade mark’s distinctiveness is key in preventing the registration of similar marks. In this case, ANKH OF ANUBIS was deemed inherently distinctive to a high degree because the mark is not descriptive and doesn’t have any allusive qualities with respect to the relevant goods and services.
- Market overlap risks: Operating in similar markets, such as gaming, where brand recall may rely on thematic elements, like references to mythology, requires careful strategy to avoid potential confusion with established brands.
- Navigating thematic brands: Where companies use shared themes, such as mythological elements, they should carefully consider unique visuals and distinctive additional elements to signal brand origin clearly to consumers.
Ultimately, brand owners should invest in distinct brand identities and seek legal guidance to mitigate potential IP disputes.
