Photo: Diesel 2015/2016 Fall/Winter Campaign

Founded in 2012, Black Forest Games is an independent game studio, based in Offenburg (Germany), specialised in creating high-quality video games for all major game platforms. In 2014, Black Forest decided to file an application to trademark the name Dieselstörmers for one of its fantasy action games.  However, the Italian Fashion brand Diesel notified the German company that it will oppose the application for the Dieselstörmers trademark because the consumers might believe that the good in question, comes from the same undertaking or from economically linked undertakings. In other words there would be a “likelihood of confusion”.   

The dispute was settled by The Office for Harmonization in the Internal Market (OIHM) which denied the trademark registration to the German game studio.

According to OIHM:

Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public. (…)

The conflicting marks are visually, aurally and conceptually similar to the extent that they all contain the element ‘Diesel’, which constitutes the earlier marks and is entirely included in the contested sign. Furthermore, it is reproduced at the beginning of the contested sign. Consumers generally tend to focus on the initial part of a sign when confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the fact that the earlier marks are reproduced identically at the beginning of the contested sign has to be taken into account when assessing the likelihood of confusion between the marks.[i]

Considering that there is a likelihood of confusion on the part of the consumers, the Opposition Division decided to reject the contested trade mark. As a consequence, Black Forest Games cannot use the Dieselstörmers.  

The German game studio has decided not to appeal the decision. Black Forest’s Managing Director Adrian Goersch commented that:

This decision has caught us with our pants down. We are quite surprised that our trademark application has been formally denied. We are no multinational corporation; we cannot fight this decision, even though, frankly, it is a disaster with indie marketing as difficult as it is today. But the history of this game and our company as a whole has been marked with tough challenges and we will manage to overcome this one as well. First of all, we will make sure everyone will be able to keep playing the game, and then we will come back with a new name.[ii]

 

[i] Opposition nº B 2380072 Diesel S.P.A versus Black Forest Games GmbH : https://thestyleofthecase.files.wordpress.com/2015/10/diesel-v-dieselstormers.pdf