IP in the Virtual World: Why Registered Trade Marks for Game Names are Important

The short answer, trade marks are important for two main reasons:

  • To ensure you can use what you want to use with minimal risk of being sued; and
  • To ensure you have an exclusive right which allows you to freely advertise and sell your game in all your key countries.

Below we answer some questions that are often raised by game developers and studios when considering what to do about trade marks.

First, what are trade marks?

In its most simple form, a trade mark is a sign that connects a product or service with the person or company that has provided that product or service.

The term “trade mark” is often used interchangeably with the term “brand”.  Reference to trade marks can also mean registered trade marks protected under Statute in the relevant country[1], or unregistered trade marks in those countries where rights through use and reputation are recognised[2].

Traditionally, registered trade marks were limited to words and logos, but elements such as colours, sounds, shapes and even smells are now recognised as registrable trade marks in many countries.

Registered trade marks are a valuable and well-recognised part of the assets attached to traditional “bricks and mortar” store-based businesses as a means to establish and protect a reputation and retain an exclusive sphere of operation.

For game developers and studios, the name of the game is what operates as a trade mark. 

Because downloadable and mobile games reach the market through a very different avenue to traditional products and services, the need to have a registered trade mark can be less obvious.  However, while the virtual world of online and mobile games seems far removed from traditional forms of business, understanding the implications of registered trade marks is still critical for success.

How can registered trade marks impact on game developers and studios?

A registered trade mark provides the owner with an exclusive right to use that trade mark in the country covered by the registration for the goods and services described.

Trade mark development for a new game often starts well before the game is released onto the market.  If you choose a game name without conducting any searching, there is a risk of choosing a name that is the same as or similar to a registered trade mark.  Use of this name may result in having to deal with an action for trade mark infringement as soon as you launch your game.

Managing an infringement action could involve Court action and may mean you need to develop a new name for your game.  These time-consuming and costly actions necessarily divert attention and resource from a successful game launch.

Conducting trade mark searches in key markets before finalising your own trade mark name will let you identify potential risks early on, and allow you to choose a trade mark with minimal risk of infringement.

Why register and not just use?

There are many advantages to having a registered trade mark including:

  • Suing a third party on a registered trade mark right is more straight forward, less cost, and typically more successful, than suing on unregistered trade mark rights.
  • Some countries do not recognise trade mark rights through use and reputation so having a registered trade mark is the only way to ensure you have enforceable rights in your trade mark.
  • A registered trade mark is a recognised business asset that adds value to the business.
  • A registered trade mark is a key way to show you have exclusive rights in your trade mark and crucial when valuing a business (or game) for sale.
  • Trade mark registration gives you the best control of your trade mark, allowing you to control the way the trade mark is used in the market place and in collaborative projects with others.

Is it too soon to spend money on trade marks when the game is early in development?

While it is not mandatory to have trade mark registrations in place before using your trade marks in the market, the rule of thumb is that earlier is always better. 

In most countries there is no requirement that a registered trade mark is used for at least three years from registration, so you can secure a trade mark registration before the trade mark is in use without risk of having the registration attacked or removed for non-use. 

Further, if two trade marks are in conflict in a country that recognise unregistered trade mark rights, a first unused trade mark covered by a registration will usually be deemed a better claim to rights than a second trade mark in use, if the use started after the first trade mark was registered.

Much as early clearance searches allow you the flexibility to develop a trade mark that is free from other claims, registering your trade mark early allows you to reserve a position for your trade mark while further developing the game without risk of losing rights in the name.

What about game characters – are those trade marks?

Yes, central characters in games can often develop into stand-alone trade marks.  

If a key character is likely to take on a life of its own, then trade mark registration for the character can be a valuable asset, especially if you intend to produce merchandise or spin-off games with a central character.

It is important to remember that copyright also exists as a right in original artistic works.  Original artistic representations of characters will benefit from inherent copyright, and in some countries copyright can be registered as part of a strategy for robust protection of your trade marks.

Does a New Zealand game developer really need to search or register trade marks overseas?

The nature of online and mobile games means that a successful game will be taken up around the world.  While you may be based in New Zealand, your potential market will be global.

In order to gain the maximum advantage from a global market, considering your trade mark position early on in your key markets is crucial.

It is important to take into account language considerations when developing your trade marks.  You should consider whether the name or character would be internationally acceptable as a trade mark.  You should consider translations and transliterations, and whether you should search for these elements to understand any cultural sensitivities overseas that could impede the game’s success.

It is also valuable to understand in which countries you may be able to take the risk and rely on your unregistered rights.  You should also understand which countries do not recognise unregistered rights, have a reputation for opportunistic trade mark registrations (aka trade mark squatters), and early trade mark registration should be considered. 

Is it possible to search and register trade marks internationally without breaking the bank?

Registered trade mark rights take effect in the country in which they are registered, so each country of interest should be separately considered[3].

Conducting a proper trade mark search that gets you the information you need across multiple countries is specialised and not something that should be done without proper training.  Trade mark applications should also be prepared by someone who understands the differences in law in each jurisdiction and the balancing game between maximising your rights and minimising the risk of objection to registration. 

Both exercises necessarily incur costs, but a carefully chosen service provider can help you plan to suit your budget and appetite for risk.

In the right hands, effective searching can be customised to fit the budget of a new game developer or fledgling studio.  The right service provider will also understand how to manage costs for international trade mark registrations using the Paris Convention Treaty[4], and the Madrid Protocol system[5].

What now?

Understanding the strength of your trade marks and the value in registration is an important consideration when developing a successful game.  Where possible, searching and registration should be key tools to ensure a solid trade mark base on which to grow your game.

Ellis Terry is well experienced in assisting game developers and studios at every stage from trade mark identification and clearance searches, to developing and implementing a trade mark filing programme including copyright considerations, through to helping enforce your trade mark rights with third parties.

Talk to us today to see how we can help you.

[1] Such as the Trade Marks Act 2002 in New Zealand.

[2] These rights can be recognised in consumer protection legislation such as the Fair Trading Act 1986 in New Zealand, or through the tort of passing off.

[3] One notable exception here is the European Union where a registration covers all 27 Member States.

[4] The Paris Convention provides a 6-month window to file overseas in any other country which is also a member of the Convention following a base New Zealand application while retaining the New Zealand filing date as a first date for priority.

[5]The Madrid Protocol system allows an application designating countries which are members of the Protocol to be filed in a single International Registration for typically lower cost than filing separate National applications.