Pants Down at Black Forest Games!

After regrettably buying my husband a PS4 for Christmas, I thought it was about time I posted for all of the gamers out there, but of course maintaining a fashion link!

This week’s post focuses on Black Forest Games’ unsuccessful EU Trade Mark (EUTM) application for DIESELSTÖRMERS after opposition from the Diesel clothing brand.

The folks at Black Forest said “the decision caught us with our pants down” and issued the following photograph. At least the brand hasn’t lost its sense of humor!

Dieselstormers

That’s one way to respond to an EUTM application opposition!

All about the game

Dieselstörmers is a computer game, described as combining “roguelike action with 3D graphics and lots of old-school run ’n’ gun action”. In all honesty, this doesn’t mean a great deal to me, but hopefully it resonates with the hardcore gamers!

Black Forest Games, apart from its witty press releases, is an independent game studio that was established in 2012. The studio’s HQ is in Offenburg, Germany. You can find out more here.

Diesel is a well known mid-end clothing label, and sells its goods across the world. Not a brand you would typically associate with gaming!

Diesel

Diesel, a brand you would ordinarily associate with gaming?!

Matter of fact

Diesel S.P.A. owns two EUTMs for DIESEL, which gives the brand protection across all 28 Member states for goods like clothing, shoes and accessories, but surprisingly also covers things like electronic games, game systems, DVDs and computers among others.

Black Forest Games applied to register DIESELSTÖRMERS as an EUTM in April 2014 for goods including DVDs and CDs for computer or video games. The studio also made it clear that their DIESEL reference was to the fuel, and not an ode to fashion in any way.

Diesel opposed this application in July 2014 on the grounds that allowing the application would create a strong likelihood of confusion between its DIESEL mark and the DIESELSTÖRMERS mark.

Confusing

Diesel opposed the DIESELSTORMERS application on the grounds of likelihood of confusion with its well established brand

Black Forest Games expected to be able to settle amicably with Diesel as DIESELSTÖRMERS would not in any way relate to the main wares under the Diesel brand. However, Diesel turned out to be a tough cookie and decided to formally continue with the opposition.

Decisions decisions…

The EU IPO (the regulatory body governing EUTMs) agreed with Diesel. Black Forest Games’ application was rejected. The grounds the EU IPO referred to in its decision were:

  • The goods Black Forrest Games applied for were identical or similar to Diesel’s registered goods.
  • The marks were visually, aurally and conceptually similar based on the use of the word DIESEL in both.
  • The overall impression of the sign may have led the public to believe that the goods came from the same company, or from a linked company.
Similar

Far too similar for the EU IPO’s liking!

FTL verdict

This case is a timely reminder that trade mark oppositions are fought on the basis of the goods and services for which the earlier mark is registered, not just those goods and services for which it is used.

In this case Diesel was successful because its trade mark registrations covered computer games, even though its reputation is as a clothing brand. This is why it is so important to have professional trade mark clearance searches carried out before you decide to adopt a new brand.

Pacman

Who would’ve thought, Diesel games!

Since the decision, Black Forest Games has re-branded the game in question to ROGUESTORMERS – catchy!

Until next time it’s over and out. I’m off to brush up on my FIFA skills…

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4 thoughts on “Pants Down at Black Forest Games!

  1. Kelsey Farish (@KelseyFarish) says:

    Firstly, J would like you to know that he “fully supports your decision to give C a PS4 for Christmas.”

    Secondly, I find this one a bit odd – the Dieselstormers logo/branding looks nothing like the Diesel clothing branding! Also, I genuinely didn’t realise that a clothing company could register for various classes that fall so far beyond its remit, like in gaming. Shouldn’t there be some sort of proof that Diesel (clothes) intend to manufacture games (&/or other items in that class) before they can register the TM for that useage? It seems a bit unfair!

    Liked by 1 person

    • fashtechlawyer says:

      Thanks @KelseyFarish for your great comment!

      This is a tricky one and I totally appreciate your frustrations. It does seem hugely unfair that a clothing brand should be able to block a gaming brand’s application to register an EUTM, particularly when the mark itself isn’t identical and gaming isn’t something we’d necessarily associate the clothing brand with!

      However, first off, we shouldn’t forget that BlackForest’s EUTM application was for the word DIESELSTÖRMERS, not for a logo and so the branding/get-up wouldn’t really be taken into account here. Albeit I agree, the branding surrounding the DIESELSTÖRMERS mark and the branding around the DIESEL registered EUTM is very different!

      Secondly, unfortunately for BlackForest, to register an EUTM there’s no particular obligation to prove prior use (like there is for a U.S. application). This means that Diesel could quite easily apply to register their EUTM under Nice class 9 for:

      “…electronic games or portable systems for games use with televisions and autonomous portable video games for use with televisions…”

      without having to prove use of the mark for games beforehand. You can read the full classification spec here for more info: https://www.ipo.gov.uk/tmcase/Results/4/EU006209183?legacySearch=False and the application number for this mark is 006209183, in case you fancy reading the full details.

      However, if BlackForest fancied their chances and wanted to try to challenge the DIESEL mark for non-use under class 9 for gaming, providing Diesel hadn’t used the mark for games in the last 5 years, or for 5 years from the date of registration, then this could be a way forward. If successful, BlackForest could have the DIESEL mark partially revoked under class 9 for goods relating to gaming and then potentially go on to register DIESELSTÖRMERS as an EUTM as originally intended. You can find out more about the revocation procedure here: https://www.gov.uk/government/publications/trade-marks-revocation/revocation-non-use-proceedings

      That said, this could be a lengthy and costly procedure for BlackForest and given Diesel’s multi-national status, coupled with the likelihood of the power-brand having a vast legal team and potentially more resource to fight a challenge, than perhaps BlackForest would have, maybe it just didn’t make commercial sense for BlackForest to take this further. Instead the games brand might’ve thought it more sensible to re-brand the game to ROGUESTORMERS.

      Maybe there’s someone out there at the @BlackForestTeam who could comment on this for us?! We’d love to hear your stance on this!!

      I hope that helps and thanks so much again for your comment Kelsey, it’s a really interesting topic!

      Like

  2. Adrian Goersch says:

    @fashtechlawyer This is Adrian from Black Forest Games. Thanks for covering our little story.

    You nailed the point. Though we felt that we might have a good chance to finally win this dispute we decided not to take the fight due to financial reasons.

    Another important point: DIESELSTÖRMERS was not in final state, still to be released ‘finally’ on the PC platform Steam and on Microsoft’s and Sony’s consoles. We didn’t want to take the risk, how small or big it might have been, to be forced to change the name AFTER having the game released on all platforms. With the release you get the main part of press and media coverage.

    Liked by 1 person

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