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!

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!

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.

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.

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.

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…