Video games have officially hit the mainstream — at least, according to the General Court of the EU. Its recent decision goes some way to dispel the stereotype of gamers as overly-immersed ‘nerds’ — and, where trade marks are concerned, highlights the importance of fully understanding the characteristics of your marketplace before arguing a case.
Case background — Here be dragons
The decision related to an EU trade mark (EUTM) application for the word DUNGEONS covering goods and services in Classes 9, 28 and 41, including computer game software, toys, games and related services.
The application was filed in the name of Kalypso Media Group GmbH (Kalypso), a German developer, and opposed by Wizards of the Coast LLC (Wizards), an American publisher and producer of the cult tabletop role-playing game Dungeons & Dragons.
The opposition was based on earlier EU registrations for DUNGEONS & DRAGONS which collectively covered similar and identical goods and services in Classes 9, 28 and 41. The opposition alleged a likelihood of confusion on the part of the public in the EU as well as unfair advantage and/or damage to the distinctive character or repute of the earlier mark.
On 30 January 2018 the Opposition Division of the EU Intellectual Property Office (EUIPO) upheld the opposition for all contested goods and services on the basis of a likelihood of confusion between the words DUNGEONS & DRAGONS and DUNGEONS. Kalypso subsequently appealed the decision.
The first appeal — Average at best
On 21 September 2018, the EUIPO Board of Appeal reviewed the decision and found the respective goods and services to be either identical or similar. It also concluded that the marks were visually and phonetically similar to an above average degree and conceptually similar to an average degree (since both marks referred to dungeons).
Interestingly, the Board stated that games and computer software were ‘everyday’ items and their audience had extended to consumers who don’t have specific knowledge of the gaming industry — and therefore exhibited an “average at best” degree of attention when purchasing.
Given the similarity between the marks and the goods/services, the ‘average’ attention of the relevant public and the average inherent distinctiveness of the earlier mark, the Board upheld the original decision and dismissed the appeal.
The second appeal — If at first you don’t succeed…
Kalypso appealed the case to the General Court (16 October 2019), citing an infringement of Article 8(1)(b) EUTMR. It argued that the Board of Appeal hadn’t fully considered the marketplace for software, games, toys and related services. Kalypso claimed that since the games market is vast and features high prices, a purchasing decision involves research like reading reviews, which demonstrates a high degree of attention.
The decision — Gaming is easy
In its decision, the General Court reiterated the principle that when assessing a likelihood of confusion, the public with the lowest level of attention must be considered. It noted that many games are available online and on a self-service basis. Contrary to the claims of Kalypso, it also noted that games are widely promoted to different age groups, prices can be relatively low and purchasing doesn’t require specialist skills or knowledge.
The Court commented that games are no longer solely the focus of specialists (i.e. ‘gamers’) and have gone ‘mainstream’. Consequently, assuming that the games market consists of consumers with both average and high degrees of attention, the assessment as to whether there exists a likelihood of confusion must be based upon the perception of the reasonably well-informed, observant and circumspect public, which displays an average degree of attention.
The Court concluded that the EUIPO Board of Appeal didn’t fail to consider the specific characteristics of the games market or make a mistake in its assessment of a likelihood of confusion. It noted that games are disposable items intended to be completed, expanded with additional ancillary services or ultimately replaced with newer games. It therefore upheld the Board of Appeal’s decision in full and dismissed Kalypso’s appeal.
As an avid gamer myself, this decision initially felt surprising. I know that ‘gamers’ carefully research and consider the price, content, review rating and style of a game — as well as, often, the developing studio and publisher — before parting with their hard-earned cash.
However, this view doesn’t take into account the incredible variety of games that are now available. With just a couple of clicks or taps, anyone can download a game on their mobile, tablet, smart TV or car (if you’re fortunate enough to own a Tesla). With this in mind, the ‘everyday’ item tag does appear to be justified.
Today, so many games are available for free or at the mere cost of a few intrusive pop up ads. While many people like myself carefully select their games prior to purchase, the evidence suggests that there is a subset of customers who don’t necessarily identify as ‘gamers’ and won’t pay a particularly high degree of attention during the purchasing process. This subset would undoubtedly be more susceptible to being confused in the marketplace.
In my view, this decision is unlikely to be further appealed to the Court Justice of the EU (the highest Court of the EU). As the video games market continues to grow, so will the importance and relevance of this ruling.