Indie studio forced to change upcoming game's name after objection from Diesel clothing company.
Last Thursday we saw OHIM (the body responsible for registering trade marks etc within the EU) refuse a trademark application (albeit partially – ruling here) for the game DieselStormers, an early access side scrolling rogue like by Black Forest Games. This basically means that BFG must change the name of their game, despite already having marketed (and sold!) it as DieselStormers. And no, it’s not a large publishing house that’s keeping the little guy down here – it’s actually because of these guys:
Okay, not those guys specifically, but the company that makes Diesel clothing. I know, I was confused at first too - how on earth (and why) did Diesel, the clothing designer, challenge an application for a video game called DieselStormers?
The way EU trade mark applications work is that you submit your application and then there’s a period of time (around 3 months) where anyone can challenge your application on the grounds that it infringes their trade mark - and that’s exactly what Diesel did.
Without going into huge detail on trade mark law, there are 3 things to think about when considering trade mark infringement: (i) are the 2 marks the same or similar, (ii) are both marks registered in relation to the same, or similar, goods or services, and (iii) is there a “likelihood of confusion” to the public (i.e. is there a risk the public will think both products come from the same source). If all three are answered in the positive, the application will be rejected.
Same or Similar Marks
OHIM’s reasoning appears to be that, since the word “DieselStormers” has no dictionary meaning itself, when consumers read the word, they will mentally dissect the word into its 2 components – i.e. “Diesel” and “Stormers”. Treating the word “DieselStormers” as two separate components, this would contain a part that was identical to the clothing designer’s mark. As such, the two marks are conceptually similar to the extent they share "Diesel". Mhm…okay…
Let’s not get too hung up on point (i) – the 2 names are kind of similar, even though the origin story behind each is likely very different.
Same or Similar Products
But let’s look a bit more at point (ii) – and this is the main reason I decided to write this post. Developers - it is so, so important to check whether the name you are thinking of for your game is already protected by someone else’s trade mark in relation to similar products! (Note: It’s totally possible for two identical trade marks to exist if they are registered in relation to completely different products).
When you register trade marks, you register them in certain “classes” – e.g. class 1 includes chemicals, class 6 includes metals and class 9 largely includes software (and in turn, video games). And when you’ve picked what broad class you want to include in your application, you can specify in more detail exactly what products you want to protect (e.g. handheld consoles, game software).
So Diesel had a couple of trade marks in class 9 and had specifically identified “compact discs, DVDs and other digital recording media” and “electronic games or portable games systems” as some of the products they wished to protect. BFG’s application for DieselStormers was also in class 9 and identified “recorded DVDs, optical data carriers, CDs for video games” and “games software, computer software for mobile computer games” as some of the products they wished to protect.
OHIM said that BFG’s “recorded DVDs, optical data carriers, CDs for video games” were identical to Diesel’s “compact discs, DVDs and other digital recording media”. They also said that BFG’s “games software, computer software for mobile computer games” were similar to Diesel’s “electronic games or portable games systems” since they could all be used “complementary to each other.”
As a result, OHIM decided that BFG’s application was in relation to identical and similar products already protected by Diesel’s trade marks.
And finally there’s the question of whether or not someone looking at DieselStormers would be confused into thinking that the game was produced by Diesel. In addition to the reason mentioned in relation to (i) above, OHIM stated another important factor was that, since we read from left to right, we put emphasis on the first part of the word (i.e. Diesel). As a result, the fact that the first part of DieselStormers contains the word “Diesel” (which means we will read it first) increases the chance of confusion.
Since all 3 tests were answered in the affirmative (rightly or wrongly), BFG’s application was rejected (in part).
At first I was wondering what reason Diesel could have for opposing this trade mark in respect of products that are clearly so different from those which Diesel themselves normally produce. But after a bit of Googling I found that Diesel have apparently licensed their name to a clothing expansion pack for the Sims3 – so in a way, it does kind of make sense for Diesel to protect their name in respect of video games.
While BFG could appeal OHIM's ruling, this would be an expensive process with no guaranteed outcome. There may also be grounds for them to challenge Diesel's trade marks in relation to video game related products (since they don't seem to be using it there all that much) but again this is uncertain, and also, money.
Without it being all doom and gloom though, remember that trade marks are an effective defensive tool that can be used to protect your IP! So make sure you always get appropriate IP protection over your game as it’s ultimately one of your most valuable assets!
Header Photo: (c) owned by Square Enix - thanks for making Vivi so awesome!