GW legal threat forces War Banner into a name change

[zoidpinhead 12492xp 1]

Although it is close to 1st April this is apparently no April Fools.  War Banner have announced that after a threat of legal action over similarities between their War Banner name and Warhammer (TM) they will be changing their name to Dark Peak Games.  Announcement is here and has been retweeted by North Star:

https://footsoreminiatures.co.uk/pages/war-banner-to-become-dark-peak-games?fbclid=IwAR2ILM0vyrY0YEweojs6WbbVA7k3e9PoYe9s7iIh-6sXv7_9pFedISWZoww

Whilst I can see there is some surface similarity between the two names it doesn’t seem to me that there was any intention to tread on a GW trademark.  Certainly there isn’t any crossover in gaming terms as one is an historical company and the other Fantasy/SciFi, although I’m sure trying to explain that to a judge would probably be challenging.  However, as a vaguely sentient human I wasn’t at all confused and don’t feel that I have been duped into looking at Gangs of Rome or Mortal Gods because I thought they were something to do with a GW brand.

I’m no lawyer but it does seem GW are throwing their weight around unnecessarily here.  Rebranding is a really big cost to a small business so this feels like an excessive penalty without an actual verdict.  Money is a significant entry barrier to fair access to the legal system.  To fight this would cost tens of thousands and even with a strong likelihood of success there are no guarantees.  The loser would likely pay all of the costs and this would easily wipe out most small businesses in this industry. There was no chance GW would ever have to actually prove their case in court, the threat was more than sufficient.

Is this a signal that GW now feel they own anything that starts with “War” as a trademark?

[avernosKeymaster 33947xp 5]

aye GW are being total cunts again, but they have never changed that just masked it.

Andy’s problem is that in an early blog post he actually said that Warbanner was a homage to his favourite magic item from Warhammer.

If he hadn’t said that publicly he probably could’ve gotten away with telling them to go fuck themselves with a barge pole…sideways. Alas it was out in the public domain.

Even so it’s a shitty thing to do and it’s not infringing on any current property, not even taking into account War and Banner being words, it’s like the space marine shite all over again.

[somegeezer 18431xp 1]

I’d never even considered they were similar – until reading your post. Now they come to mention it, they are quite similar: Warhammer/War Banner (they’re close enough to rhyme, almost). As for going after anything “War …”, if War Cradle have to rebrand, we’ll know the answer.

[maledrakhParticipant 11996xp 2]

You know, I actually see GW’s point here. The names are very similar in as they, as somegeezer points out,  rhyme, have the same vowels, syllables and meter. I believe the total impression is what leads GW to action, not so much the word “war”. If they had been triggerd by “war”, several other companies would have been given a C&D a long time ago. That said, I don’t nessecarily think that the company previously know as War Banner have meant to sponge on the Warhammer brand. Whether there is any intention is in any case irrelevant to the matter.  (If War Banner had changed their name to “Battleaxe” however ;D)

The thing is that companies are obliged to take some action to protect their main names/trademarks.

Since they do operate in the same general market (games /toy soldiers), if GW did not take action, they would have much less of a case in the future when some other and more substantial threat surfaced. It’s a bit of a catch 22, really. Now they will get a lot of bad publicity because the impression will be that they are being their old selves.

[torros 23816xp 0]

Just for info

The following checklist is meant to help you determine whether your trademark may have been infringed.

Is it likely that a customer will buy a product, believing he or she is buying somebody else’s product?
Are the products the same kind of item?
Is it likely that a customer will believe that a particular entity has sponsored or approved the item bearing the mark?
Are the two entities using the mark competing with each other for business?
Do the two entities sell their product in the same sorts of stores?
Do the two entities sell their product to the same kind of customers?
How much do the two products cost? (This is a good way to determine whether a product is a knock-off as well.)
How do the two entities advertise and inform customers about their products? Are they doing similar marketing?
Does one entity use the same mark on several different kinds of products?
Are the two products closely related? This question might arise in a situation like the following example: one entity using the mark sells cosmetics and the other entity sells hair do-dads. Both products are be found in the “Health and Beauty” department of a drug store or discount store, sometimes in the same aisle. Even if the products are different, they are closely related. But if one entity uses the mark on cosmetics and the other uses the mark on trailer hitches, a good argument could be made that the products are not closely related, not marketed in the same way, and not purchased by the same kind of customer.
How much are the marks alike?
When spoken out loud, do they sound the same?
Is one mark a literal translation of the other mark into a foreign language that would be familiar to the public? For example, “Chez Louis” for “Louie’s Place.”
Is one mark well known and readily recognized? Think: the golden arches, the little bell in a circle, the Nike swoosh, the CBS eye, the Mercedes hood ornament. And what about Poppin’ Fresh, the Green Giant, and Tony the Tiger?
Is the mark composed of a distinctive phrase or symbol?
How long have the two marks been in use?
Has the entity claiming infringement stopped using the mark?
Is one entity a “free rider?” That is, is the entity using an established name or mark to get an edge in selling the item?
What did the alleged infringer intend by using the mark?
Was the use inadvertent?

[zoidpinhead 12492xp 2]

@maledrakh you may well be right and I’m no supporter of companies trading on another’s IP but I don’t think this is what is happening here.  Model designs are totally different, there are no fake Space Marines in all but name here.

War Banner state they were founded on the 1st August 2017.  They got notice from GW on 1st March 2019.  GW haven’t exactly jumped to their own defense here.  So what is the cause?  Is it down to the increasing success War Banner are having?

Gangs of Rome has been a big success in the low model count skirmish combat game market that GW are seriously intent on muscling in on (Kill Team, Necromunda, etc.), probably feeling that the success of precursor games in this area like Frostgrave has signalled the market has a need they weren’t meeting.  Mortal Gods looks like it will have a similar market impact to Gangs of Rome.  If so this doesn’t feel justifiable solely on trademark protection grounds.  Is there a question over whether it is in fact partly anti-competitive?

[warzanKeymaster 31125xp 4]

Yeah this is one of those knife edge cases for me. I think you could probably fight it, but the cost of fighting is just as bad as a rebrand (and you can still lose).

I really feel for Andy and the guys, its yet another hassle they didn’t need. (And all of us here know the work in a rebranding exercise!)

As for GW, don’t ever expect them to be any different. Those guys compete hard, and pretty much by whatever means they have at their disposal. But honestly most of the companies in our industry are just the same (remember many have popped out of the same mold) and if they had the resources and opportunity at their disposal they would act exactly the same way.

 

[limburger 21709xp 0]

Maybe it is because of ‘Warcry’ that GW’s lawyers are doing their job and looking at companies that may have names that are (too) similar to their own ?

We don’t know the exact wording of the letter that GW sent.

We don’t know if War banner were planning to change their name anyway and this just accellerated their plans.
Rebranding isn’t cheap, but it is something companies do for a variety of reasons. ‘War banner’ would make it difficult to convince customers that they may sell more than just stuff for wargames.

Also keep in mind that we as hobbyists may know the difference, but the fact that they operate in the same industry (“sell sculpted miniatures, publications and accessories for tabletop wargaming “) may be enough for a judge to give GW the advantage they need to ‘win’ in court. The fact that one is historical and the other fictional may be too similar in the eyes of the law.

I’m no lawyer though and it looks like they’re already committed to the new name.

[wesadie1969 2729xp 2]

Fly too close to the sun you get burned, pretty sure War Banner will take this in their stride and continue producing great products.

Were GW a bit heavy handed? Yep.

Were GW within their legal rights? Yep.

Certainly not going to be one of those hobbyists clutching at their pearls at this. GW may be all light and fluffy with the community now but there is still that hard corporate shell underneath.

[timmothParticipant 697xp 2]

GW has been steadily rebranding their entire range for just such reasons, not because they’ve given up chasing smaller companies, but so they can avoid a repeat of the ‘Space Marine’ loss.

Attitude hasn’t changed, they’re just suring up their ground, to be able to win such challenges.

[templar007 52376xp 1]

I’d like to start by saying, any company has the right to protect their Brand and Trademarks.

God knows, if someone launched a new Web based ‘Gaming review and News Show’ and decided to name it ‘On The Table Top’ ergo OTTT.  I’d be all for Warren and Lloyd unleashing their Barrister, (who I imagine is named Neville and is shorter than Sam, slightly hunched, and not nearly as dashing or as charismatic.  He speaks in a very quite voice and shakes from nervousness all the time. Oh, and he has nerdy glasses that are taped together in the center with white tape)   They’d be well within their rights to insist on that new company to change it’s name.  They would do so as soon as they were made aware of the existence of said infringing company.

So………….

Why did GW wait almost two years before unleashing their favorite ‘play things‘ on a small company?

Maybe, because they were in a surface campaign of Good Will to help breath new life into a withering line of games that were loosing the battle against ‘New & Innovative’ games?  They couldn’t be seen as the BIG BAD WOLF while convincing everyone that they had become better human beings and should be viewed in the same soft and gentle glowing light that bathes the Underdog Companies that we Gamers support and root for.

I do wonder if War Banner could prove that GW waited too long to launch a protest and now the cost of rebranding should be paid from GW’s pocket and not War Banner’s.

I’m no Lawyer, and I’m sure that legally GW could never be forced to do this.  But if they wanted to prove that they are not the ‘Same Old GW’ this would be the thing to do.

 

On a personal note……

I’m thinking now that I’m glad I’ve not bought into the new ”Super Sized Space Marines”.

 

At least not yet…..

[mecha82Participant 10037xp 0]

This is not really surprising at all considering how heavy handed GW can be with use of they lawyers for even smallest reason but it tends to be what big companies do. Is this bad PR to them? Possibly yes but GW doesn’t seem to care about that considering that main target for they products (kids) don’t follow these news and thus don’t know about this or even care.

[warzanKeymaster 31125xp 5]

The OTT lawyer

 

[limburger 21709xp 1]

@templar007 consider that their legal team have to actively look for any possible ‘threats’ to their IP world wide 2 years may simply be the time they needed to find them ?

It’s probably War Banners’ recent successes that brought them into their sights.

Consider the fact that companies as big as Warner Brothers rely on automated processes to target any potential copyright violations. And their legal departments are likely to dwarf GW’s legal team.

As such two years only looks like a long time in hindsight.

[maledrakhParticipant 11996xp 0]

They could always claim the Hoboken Squat Cobbler defense.

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