The Hobbit can work magic

The name Hobbit is known worldwide—whether through J.R.R. Tolkien’s books or the film adaptations.

Does this automatically mean that everyone also knows the Hobbit trademark? That’s an interesting question that the Board of Appeal of the European Union Intellectual Property Office (EUIPO) is currently considering in a similar case.

However, in the decision discussed here, this question does not play a role. The defendant—a German applicant for the HOBBIT trademark—did not raise this point, nor did they request Middle-earth Enterprises, the holder of the Tolkien trademarks, to provide proof of use of the HOBBIT mark.

This decision is also not about the similarity of the marks; that is clear, as the marks are identical. So what is the case about? The EUIPO is examining the interesting question of how far the similarity of goods and services extends.

Middle-earth Enterprises’ trademark is registered for (among other things) “online retail services for clothing” in Class 35. The German applicant’s mark is registered for “vehicles” in Class 12. Are vehicles similar to the sale of clothing? Yes, according to the EUIPO.

The EUIPO explains that the sale of clothing also includes safety and protective clothing. Such products are often sold by businesses that also offer bicycles, motorcycles or other vehicles. After all, they can be offered through the same channels and partly target the same audience. This creates a relevant, albeit limited, connection.

There is, however, something to note. Case law has repeatedly established that a product is somewhat similar to the sale of that product (albeit to a low degree). So the sale of clothing is somewhat similar to clothing itself. But it requires an additional step to say that a manufacturer of, for example, motorcycles might also sell protective clothing, potentially causing consumer confusion. Should one always consider the hypothetical offerings of a company in an entirely different sector? For us, that is a step too far.

Hobbits cannot perform magic in Tolkien’s books. But in real life, they just might.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.