EU Orders Makers Of DieselStormers To Change Name Because Diesel Clothing Trademarked Diesel For Everything

from the you-got-game? dept

In trademark disputes and their resolutions, it's not often that I see a pure headscratcher. That is to say, I rarely see a ruling on a trademark dispute and find myself at a loss for all explanation. This is, however, one of those cases. The dispute is between Black Forest Games, makers of a game entitled DieselStormers and Diesel the company, which makes clothing. The problem arose over a year ago, it seems, when Diesel reached out to Black Forest Games about the title of the game, expressing concern that it was a trademark violation of the Diesel brand.

The dispute began in July 2014 when Black Forest Games, maker of Giana Sisters: Twisted Dreams, received a trademark claim from Diesel over the name of its co-op arena brawler, Dieselstormers, which was funded through Kickstarter and released to Steam Early Access in July 2014. The Italian clothing manufacturer had claimed there would be a "likelihood of confusion" if Dieselstormers received its own trademark. Diesel's trademark covers things outside of clothes, such as toothpaste, walking sticks, Christmas tree decorations - and games.

"In all probability an understanding will be reached as Black Forest have no intent to create clothing under the Dieselstormers brand," the developer stated at the time, before adding, "the 'Diesel' part of Dieselstormers refers to the liquid fuel type of the same name and is not a parody of the fashion brand."
Turns out no understanding was ever reached, however, and Diesel ended up taking the dispute before the EU Office for the Harmonization in the Internal Market (OHIM). At issue was Diesel's registration of their trademark "Diesel," including in the marketplace for games. The reason why the developer kept referring back to clothing, including in the quote above, is because Diesel doesn't make games. Like, at all. And Black Forest Games doesn't make clothing using the "Diesel" mark. In other words, for the OHIM, there was no internal market to harmonize, because there was no conflict. If anything, Diesel had registered a trademark for a market it wasn't participating in, which is typically grounds for the loss of the trademark. Nothing about this seemed to make sense.

Unfortunately, the OHIM is apparently in possession of logic that I don't have access to, because it is forcing Black Forest Games to change the name of DieselStormers to something else.
Now, over a year later, the Office for the Harmonization in the Internal Market (OHIM), which rules on trademark matters in Europe, has decided in Diesel's favour - and forced Black Forest to come up with a new name.

"This decision has caught us with our pants down," said Black Forest boss Adrian Goersch. "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, then we'll come back with a new name."
And why? Because a clothing company registered a trademark in a marketplace it isn't participating in and then had the gall to push around a small game developer over it. Whatever you might think the purpose of trademark is or should be today, it sure isn't this.

Filed Under: diesel, eu, trademark
Companies: black forest games, diesel


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  • identicon
    Anonymous Coward, 30 Sep 2015 @ 11:22pm

    Perhaps they were using this to test the waters before going after the more egregious infringers like Exxon or Shell

    reply to this | link to this | view in chronology ]

  • icon
    Padpaw (profile), 1 Oct 2015 @ 12:28am

    Sounds more like the question are you insane more than do you have game

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 1:41am

    Feels like the diesel clothing company deserves a punishment

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 1:51am

    VW's way out of the mess

    Now, now, what a great timing!

    A perfect way out for VW from their environmental certifications trouble. The Diesel engines will be renamed to whatever cute, engaging and positive word the PR bunch come up with. All to avoid stepping on Diesel's trademark toes, of course. And as a useful side-effect the car-company gets to pretend the whole diesel-gate talk do not apply to them, 'cause they no longer have diesel engines. Talk with the clothing company, please! :P

    Shiny!

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 2:35am

    That agency name though... "Office for the Harmonization in the Internal Market"... 1984 vibes intensify.

    Now, technically speaking, Diesel®™© is in the right here, but morally... ಠ_ಠ

    So basically any title of a creative work, commercial or no risks ending in the danger zone if they use the word "diesel" in the title ?

    I'm assuming "Maintenance and Repair for Diesel Engines" should still be safe ? Or is that confused with clothing as well ?

    reply to this | link to this | view in chronology ]

  • identicon
    Nomad of Norad, 1 Oct 2015 @ 2:38am

    There isn't a way to overrule the agency?

    Are you telling me there isn't a way to get this overruled by some other, higher government entity? They can't sue this agency in court?

    reply to this | link to this | view in chronology ]

  • identicon
    David, 1 Oct 2015 @ 2:52am

    You know what's really funny?

    The Diesel brand has explicitly been named after the fuel in 1979. That they are now going after a game with the same generic name in its title is as absurd as if Apple Inc was going after apple cider.

    In particular if you pick a generic as a brand name, you should be strictly limited to trademarking your logo and use in the specific product branch.

    Maybe the estate of Rudolf Christian Karl Diesel (the inventor of the Diesel engine) should sue Diesel S.p.A. over misappropriating his name.

    reply to this | link to this | view in chronology ]

  • icon
    Prashanth (profile), 1 Oct 2015 @ 5:06am

    Diesel is going down the drain anyway

    With the VW scandal, diesel's brand image seems to be going down the drain anyway I feel bad for both of these companies for fighting their way into oblivion.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 5:08am

    Good old mental masturbation. EU Office for the Harmonization in the Internal Market, sounds official enough. And of course on this very web page there is an Amazon advert for Diesel men's t-shirts. I am guessing the folks at Amazon did not read the article. Hint, don't purchase anything with the name diesel in it, unless you are going to use it for internal combustion. Unless of course your a lawyer who participates on the plaintiff's side of frivolous lawsuits.

    reply to this | link to this | view in chronology ]

  • icon
    John Fenderson (profile), 1 Oct 2015 @ 5:25am

    Clearly

    Clearly, the clothing company thought that the game was pants.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 5:26am

    "War on Diesel"
    awesome.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 5:54am

    And this guy must certainly be infringing

    https://en.wikipedia.org/wiki/Vin_Diesel

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 6:41am

    Does this indicate a problem with my recent investment in the startup company "Monster Diesel" ?

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 6:52am

    FuelStormers

    They should rename it FuelStormers and add an easter egg "diesel gun" that shoots flaming panties.

    reply to this | link to this | view in chronology ]

  • identicon
    David, 1 Oct 2015 @ 7:10am

    Those were the days

    There once a "dispute" between Digital Equipment and a Britsh vacuum maker over the name VAX. Digital promised to not make vacuum cleaners, and the other company agreed to not make computers. Done.

    Beretta had a similar issue, but one promised not to make cars, the other not to make guns.

    Be nice to go back to those reasonable times.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 1 Oct 2015 @ 12:30pm

    Based on the information here, the decision did look ridiculous.

    But I wish TM stories here on Techdirt would differentiate between refused TMs and infringement cases. If I've understood, the TM was refused, but there is no infringement issue (did OHIM deal with infringement, or is it left to national courts?)

    If infringement was not an issue, it's not right to say OHIM has prevented use of the name of the game - it's not giving an exclusive right to it. While the game company may feel they need to use a different name if they can't have a TM, OHIM are not making them change it.

    Not arguing that Diesel are overreaching, but the distinction seems important to me.

    reply to this | link to this | view in chronology ]


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