The distinctiveness of "DUNGEON" in relation to gaming
Appealing before the General Court, Kalypso Media Group GmbH (KMG) recently sought to reverse a decision issued by the EUIPO (upheld by the Board of Appeal) confirming the existence of a likelihood of confusion between the word marks “DUNGEONS” and “DUNGEONS & DRAGONS” in respect of games and goods and services related to computer games in classes 9, 28 and 41. In support of its appeal, KMG claimed that the EUIPO had erred in its assessment of the distinctive character of the earlier marks and the level of attention of the relevant public.
Distinctive character of the earlier marks
Whilst KMG admitted that the words "dungeons" and "dragons" are not purely descriptive of the goods and services covered by the earlier registrations, it claimed that they remain "very allusive" as they inform consumers that the games, computer games and associated goods and services (the “relevant goods and services”) take place “in dungeons where the player is confronted with dragons”. Moreover, KMG also claimed that the topics of "dungeons" and "dragons" are very popular on the games market and that numerous games made reference to those topics within their name thus reducing their distinctive character.
Unfortunately for KMG, the General Court disagreed. Not only had KMG failed to substantiate its claim that the terms "dungeons" and "dragons" were commonly used within the title of games, but it also failed to demonstrate that they identified “the purpose, type, nature or meaning, without further thought or reflection, as designating a characteristic of the goods and services in question”.
Moreover, the General Court noted that the "very allusive" nature of these words was not sufficient to render them descriptive of the characteristics of the relevant goods and services as, for example, it would have been unreasonable to consider that “DUNGEONS & DRAGONS” alludes to "computer game cartridges".
The General Court therefore concluded that the EUIPO had been right in ruling that the earlier marks had a distinctive character that was, at the very least, normal.
The level of attention of the public
Turning to the level of attention displayed by the relevant public, KMG claimed that this would be high as a result of:
- the specialist characteristics of the games or computer games market; and
- the fact that it was common in the industry for the name of games to differ only slightly given that some “subjects or topics or game styles are very popular and therefore frequently included in the names”.
As a result, consumers were accustomed to paying particular attention to the name of the games and therefore unlikely to be confused when presented with the marks at issue.
Once again, the General Court disagreed. In the first instance, the court noted that the wording of the goods covered had to be taken into consideration (for example “games” and “computer games”) and not the goods actually marketed under those marks. As a result, whilst it accepted that games and computer games had previously been aimed at a specialised public, this was no longer the case as games have since become "mainstream" and could include (for example) those who purchase games as gifts. It therefore concluded that "games" and "computer games" are intended for both a specialised public and the public at large, in which case the public with the lowest level of attention had to be taken into account when assessing likelihood of confusion.
Finally, the court noted that KMG had failed to substantiate its claim that it was common in the industry for the name of games to differ only slightly or that the relevant public within the EU are capable of not confusing games which have similar names but which originate from different and separate undertakings.
The General Court therefore dismissed both grounds of appeal and confirmed a likelihood of confusion between the marks.
While the outcome of this decision may not be hugely surprising, it serves as an important reminder of the following points:
- the courts will take into account the public with the lowest level of attention when assessing likelihood of confusion;
- the need to substantiate ones claims regarding the state of a market with evidence; and
- that arguments must focus on the specification of the goods and services applied for and not as actually marketed.
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