Insights / June 25th, 2021

Blizzard whips up a devil of a storm

Fox Media has recently applied for a registered trade mark including the word “Diablo” in the United States for pet food and beverage merchandise in anticipation of its upcoming animated series starring a small dog named Diablo.

The game developer, Blizzard, has opposed the registration. Blizzard is the developer behind the highly successful “Diablo” video game franchise which has (re)spawned a significant amount of related merchandise including drinkware, drink coasters, bottle openers, drawstring backpacks, statues, artwork, books, and journals.

Were Blizzard bringing this opposition in Australia, it would likely rely on:

  1. section 60 of the Trade Mark Act 1995, which is typically used where the holder of a “famous” mark asserts confusion/deception will arise from the use of a similar name; and

  2. section 42(b) of the Trade Mark Act 1995, on the basis that consumers would be misled or deceived due to the reputation of Blizzard in the mark and the similarity between Blizzard and Fox’s marks.

A recent similar case is the 2019 case of Rodney Jane Racing v Monster Energy Company, where Monster Energy opposed the registration of a trade mark for “Monster” in connection with alloy wheels. In that case, the Federal Court ruled that, despite Monster Energy having a strong reputation through mass marketing of its “Monster” energy drink, no reasonable consumer would mistakenly believe that the use of Rodney Jane’s trade mark meant there was an association with Monster Energy.

We suggest that in this case Blizzard would have a difficult time opposing the registration were it to occur in Australia given the word is a Spanish word and Blizzard not appearing to have used the word with respect to dog food.

As to what pre-emptive steps Blizzard could have undertaken, Blizzard could potentially have sought to register defensive trade marks. Registration of defensive marks is available where a trade mark has been used to such an extent with respect to some items that the use on other goods would likely be taken as indicating a connection with the registered owner.

While it remains to be seen whether Blizzard will be able to prevent Fox from using “Diablo” on pet food, cases like this emphasise that when it comes to protecting your trade marks - the devil can be in the detail.

Cowell Clarke’s expert Intellectual Property team is well-placed to assist in protecting intellectual property and exploring defensive trade marks. Should you require assistance in this regard please feel free to contact us.

This publication has been prepared for general guidance on matters of interest only and does not constitute professional legal advice. You should not act upon the information contained in this publication without obtaining specific professional legal advice. No representation or warranty (express or implied) is given as to the accuracy or completeness of the information contained in this publication and to the extent permitted by law, Cowell Clarke does not accept or assume any liability, responsibility or duty of care for any consequences of you or anyone else acting or refraining to act in relation on the information contained in this publication or for any decision based on it.

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