German computer game company Kalypso Media make a series called Dungeons. Dungeons 3 is their most recent and it’s available for PCs, Xbox and PS 4.
As large companies with successful franchises often do, Kalypso tried to word mark their game. They tried to protect the word “Dungeon” using the European Union Intellectual Property Office.
Wizards of the Coast objected. On what grounds? Wizards argued that their trademarked “Dungeons & Dragons” was too similar.
The authorities agreed with Wizards of the Coast, saying that there was an above-average level of visual and phonetic similarity, that the people who might buy these games had “average attention” and that Wizards of the Coast’s D&D trademark couldn’t be confused with generic goods and services.
It didn’t stop there. Kalypso appealed to a higher authority, and that’s where it gets interesting for everyone else. The General Council doubled-down on the original ruling, insisting that games are now mainstream (therefore bought by general members of the public; not people with specialist knowledge), low cost, sometimes available on a self-service basis and for all ages.
Kalypso’s argument that lots of games in Steam and elsewhere include the words “Dungeons” and/or “Dragons” was dismissed. How the game is marketed is different from the trademark registration.
The ruling shifts the burden of proof from Wizards (who had been an opponent to the claim) to Kalypso (the applicant). Now applicants may have to prove that their trademark will not be confused by the general public for a D&D title.
Writing for Lexology, Elliot Stafford of the legal firm Taylor Vinters LLP describes the ruling as a hammer blow for smaller players.
It seems like the scales have tipped too far one way. Ultimately, this is a blow for the smaller players in the space – game developers and publishers who are trying to come up with a title allusory to aspects of the game. It seems that unless you base your allusory brand / title on completely novel concepts in the title, you may run into issues from larger publishers and developers that were first to use those concepts (e.g. dungeons or dragons) in their own titles.
This decision stresses the need for publishers and developers to properly clear their proposed brand for their new title, ensuring the register is clear or that risks are low.
Original article.
Photo by Bill Oxford.
What do you make of the ruling? Are the lawyers right to worry that the scales have tipped too far or will indie RPG carry on as usual?
