Co-authored by Paimon Abedi
Kalypso Media Group GmbH (KMG), a German computer game developer and publisher, appealed an EU Intellectual Property Office (EU IPO) decision all the way to the General Court, arguing there was no likelihood of confusion between its EU application “DUNGEONS” for games and computer games and the earlier EU trade mark “DUNGEONS & DRAGONS”, registered by Wizards of the Coast LLC (Wizards).
Unusually, KMG even submitted that both the terms “dungeons” (the applied for mark) and “dragons” were lacking in distinctiveness in the field of computer games because of the prevalence of games with those words in the market so the earlier “DUNGEONS & DRAGONS” mark should have a limited scope of protection. Importantly though, the General Court confined its assessment of distinctiveness to the goods specified on the trade mark register (rather than those marketed under the trade mark), finding that the terms had “at the very least normal” distinctive character.
The General Court dismissed KMG’s appeal, leaving Wizards with a powerful mark (comprised of popular terms in computer game titles) and setting an impactful precedent for the computer games industry and beyond. As discussed below, this case raised interesting points on the scope of protection of trade marks, distinctiveness, the burden and standard of proof and the average consumer.
Cheat code: KMG unsuccessful.
Level 1: opposition
In 2014, KMG filed an EU trade mark application for “DUNGEONS” in classes 9, 28 and 41 (covering gaming related goods and services). The application was opposed by Wizards on the basis that it was confusingly similar (under Article 8(1)(b) EU Trade Mark Regulation (EUTMR)) to four of its earlier EU trade marks covering “DUNGEONS & DRAGONS” in the same classes as KMG’s application.
KMG argued that “dungeons” is a popular term in games that is already included in many other trade marks in this field and so of low distinctive character, filing search results of trade mark registrations and of game titles including “dungeon(s)” and “dragon(s)”. However, the Opposition Division set this argument aside, stating that trade mark registrations were not always reflective of the marketplace and many of the game titles in fact contained other distinctive elements with “dungeon(s)” and “dragon(s)”. The Division also highlighted that KMG’s sign was entirely comprised of “DUNGEONS” so KMG must consider it bears “an average degree of inherent distinctiveness”.
The Opposition Division effectively reversed the burden of proof in the opposition, ruling that KMG had failed to prove that the marks were not confusingly similar: “DUNGEONS” was KMG’s sign and the dominant element of Wizards’ mark so they were visually and phonetically similar to an above average degree and conceptually similar to a moderate degree (for the English-speaking public).
First hit to KMG - Wizards’ opposition upheld by the EU IPO’s Opposition Division in respect of all goods and services.
Level 2: appeal
In April 2018, KMG appealed the decision to reject its application in its entirety to the EU IPO Board of Appeal but was again unsuccessful.
Second hit to KMG, the Board dismissed the appeal.
Level 3: General Court
KMG appealed the decision of the EU IPO Board of Appeal, asserting that the Board had erred in its assessment of three grounds, which the General Court went through in turn in its judgment:
- The relevant public: when assessing the likelihood of confusion, the courts will take into account the perspective of the “average consumer” of the goods/services in question and any likelihood of association. KMG argued that the average consumer was “specialised”, given the number of games on the market with similar themes and consumers had built up a large amount of knowledge about the games’ market online and in forums. KMG stated that this meant the consumer in this area paid a high degree of attention to names and was not likely to be confused between “DUNGEONS” and the earlier “DUNGEONS & DRAGONS” signs.
The General Court dismissed this, endorsing the EU IPO’s findings that computer games were now “mainstream” and widely available to all, including consumers who are not knowledgeable but buying games as a gift. The average consumer was therefore held to have an “average at best” level of attention.
- Similarity between the marks: the similarity of marks is assessed by considering their “overall impression”, taking into account visual, phonetic and conceptual similarities and any other distinctive components. KMG submitted that, although “DUNGEONS” and the earlier “DUNGEONS & DRAGONS” signs were clearly similar, the length of the signs would be distinguishable for the relevant public given the plethora of games on the market including “dungeon(s)” and “dragon(s)”.
Again, the General Court dismissed KMG’s argument, confirming the Opposition Division’s finding that the submitted search results of trade marks and of game titles including “dungeon(s)” and “dragon(s)” were insufficient to prove that there were very many similar titles used for games.
- Distinctive character of the earlier mark: KMG argued that “DUNGEONS & DRAGONS” was not distinctive for computer games and was “very allusive” as the relevant public would already associate the mark with computer games and associated goods. KMG added that the sign lacked distinctiveness so had a limited scope of protection that should not prevent KMG’s application being granted given that the terms “dungeons” and “dragons” are extremely popular in the titles of computer games.
The General Court confirmed that it is the goods/services specified on the trade mark register to be considered when assessing distinctiveness, rather than the goods/services marketed under the trade mark (which can change over time). Applying this, the Court stated that the terms “dungeons” or “dragons” did not describe nor allude to the goods covered by Wizards’ earlier trade marks, e.g. computer game cartridges. The General Court therefore rejected KMG’s argument, holding that KMG had been unable to demonstrate that Wizards’ signs lacked distinctive character.
Final round: the outcome
Third hit to KMG: The General Court dismissed KMG’s appeal. The Court determined, given the similarity of the goods/services and between the signs, that there was a likelihood of confusion on the part of the relevant public between “DUNGEONS” and the earlier “DUNGEONS & DRAGONS” marks.
This is a decision which could have a significant impact on the gaming industry as the General Court’s assessment that computer games are no longer for a “specialised” consumer means applicants will have to take care to conduct prior trade mark clearance searches when developing game titles to avoid earlier rights. The average consumer for computer games has been determined to pay only an average degree of attention, in part because the market for these games has become less marginal and the average consumer must represent this broader range. Wizards is left with a relatively broad scope of protection for its “DUNGEONS & DRAGONS” marks and, with multiple trade mark registrations encompassing other popular terms for computer game titles (e.g. war, champions, conquest, heroes, battle, fury, warrior, magic, etc.), it finds itself playing with an advantage over its rivals.