Sweden 13 Jan 2019
The Saul Zaentz Company is an American production company that owns the rights of J. R. R. Tolkien’s two most famous works: The Lord of the Rings and The Hobbit. On behalf of SZC, we at Groth & Co have successfully opposed to a Swedish trademark registration for Hoobit. PRV made the assessment that the trademarks are confusingly similar and thus the registration for Hoobit was cancelled.
The Swedish trademark Hoobit was registered by a Swedish company in Gävle to be used for fishing lures, fishing products and sports equipment. The name allegedly derives from the fact that the fishing lure will be used to fish a sea fish belonging to the family of mackerel fish called wahoo.
The SZC has a number of registrations around Hobbit, including the EU trademarks THE HOBBIT and HOBBIT. Both of these are registered in class 28 and The Hobbit is registered for sports equipment and fishing products. These products may seem remote but a large part of the revenue in the entertainment industry comes from licensing and merchandising, so also for Hobbit. In the opposition case at PRV Swedish Patent and Registration Office, we argued that the approved trademark Hoobit should be cancelled due to the likelihood of confusion. A parallel case is also ongoing in the US where the same Swedish company has received approval for the same trademark.
Although Hobbit is well known and much evidence was presented, PRV chose to make a regular confusion assessment on the matter. The conclusion was that there is a risk of confusion as both trademarks largely comprised identical products and that the trademarks are visually and phonetically similar. PRV also concluded that the applicant had failed proving that “hoo” is a known abbreviation of wahoo. Thus, we and SZC won the case and the Swedish trademark registration for Hoobit has been cancelled.
The counterparty has the opportunity to appeal the decision.