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Trade marks: How much do you really need to protect?

As the Star Control legal battle extends to alien race names, Harbottle & Lewis' Kostya Lobov offers advice on striking a balance

One of the questions emerging in the wake of the recent dispute over the rights in the Star Control games is the extent to which makers of games should seek trade mark protection. Is it enough to register the name of the game, or should you go further? If so, where do you draw the line?

To answer that, we need to look at the purpose of trade marks. Fair warning: this is a complicated topic which cannot be dealt with fully within the confines of an article, so what follows are some headline thoughts from a UK/EU-level perspective.

kostya

Kostya Lobov, Harbottle & Lewis

At its most basic, a trade mark is a sign which is used distinguish the goods or services of one business from those of another - known as an identifier of commercial origin.

The significance of this concept is twofold. Firstly, a registered trade mark has to be used as an identifier of commercial origin in order to maintain the registration. Put differently, the trade mark must be something that consumers rely on to identify who makes the product or service in question. If a trade mark is not used in this way for five or more consecutive years, it can be challenged by third parties for non-use and potentially revoked. This is a way of making sure that the register is not littered with marks which are not (or are no longer) in active use. In some countries, a trade mark registration does not become effective until the mark actually put to use in the course of trade.

Secondly, the owner of a registered trade mark can only enforce that mark against uses which are likely to affect the functions of that mark. Use of that mark may not be infringing if it is purely descriptive in nature, or if it is not being used to identify the commercial origin of a relevant product or service. For example, a registration for the name of a character for, say, "entertainment services" in class 41 may not be enough to prevent a third party from having a character with the same name in their game, unless that name is being used in a trade mark sense - i.e. to identify the commercial origin of the game itself. By contrast, if a third party were to use the character name as the title of their game, it would probably infringe the trade mark.

A registered trade mark gives the owner a qualified monopoly, by allowing them to prevent others from using a similar sign in respect of similar goods or services, where that use gives rise to a likelihood of confusion (where an identical mark is used in respect of identical goods or services, there is no requirement to demonstrate a likelihood of confusion). Whilst each situation would need to be considered on its facts, in practice this means that have multiple trade mark registrations for different variations of spellings, plurals or capitalisations of the same word are usually unnecessary. Similarly, a registration for a word in plain text will normally be enough to cover use of that word in a stylised form, or as domain name with various extensions (such as .com, .biz etc).

Prioritisation

When it comes to developing a trade mark filing strategy, there is no 'one size fits all' approach. An appropriate strategy is a function of several factors, including the nature of the game, commercial intentions, the competitive landscape, and budget. The key is finding a balance which is right for the game and commercial objectives of rights owner. Too few filings may not provide adequate protection; whereas too many could be financially and administratively burdensome and, ultimately, unnecessary.

"Too few filings may not provide adequate protection; whereas too many could be financially and administratively burdensome and, ultimately, unnecessary."

A common place to start is to apply to register signs (which could be names, logos, images, or even multimedia marks) which are distinctive and are going to be used in selling and marketing the game to consumers. This would typically include the basics, such as the developer or publisher's name, and the name of the game itself.

Whether to apply to register the names, appearances or even animations of in-game characters, locations, weapons or vehicles is a finer judgement call. It may be worthwhile if those names are going to be used in a commercial, consumer-facing way, outside of the game itself - for example in advertising or promotional campaigns, DLC, or merchandise.

However, as mentioned above, a trade mark registration of this sort may not by itself be enough to prevent a third party from using the same name, appearance or animation, if that use is confined to being within the game itself and does not appear in any commercial consumer-facing communications. For a smaller developer with a limited budget, trade mark applications of this sort are likely to be a secondary priority.

It is not uncommon for rights owners to stagger trade mark application, starting with those seen as the most important and gradually extending their portfolio, sometimes over the course of several years. As well as spreading the cost, this can help with managing the community's reaction and reducing the risk of adverse PR. The games community has been known to be sensitive to developers and publishers protecting their rights. A flurry of trade mark applications is sometimes perceived as a land grab even if, on paper, there is nothing unusual or unlawful about it. Whilst that should not be the main driver, it pays to have a PR strategy in place to be ready to communicate with the public and deal with any fallout.

Other rights to be aware of

There are many potential benefits to registering trade marks. They are relatively cheap and easy to enforce; can potentially last indefinitely if properly maintained; once registered, they are presumed valid until successfully challenged by a third party; demonstrating ownership is simple; and they can be a useful deterrent to would-be infringers.

However, it is worth remembering that trade marks are not the only way to protect the brand or features of a game. The UK's law of passing off (which shares some similarities with the continental concept of unfair competition) is an unregistered right which can be used to prevent others from making misrepresentations which are likely to mislead the public as to the commercial origin of the game, or its licensing, endorsement or other commercial affiliations.

Copyright can also be of use. As well as protecting things like logos, artwork, packaging and source code, it could in some circumstances be used to protect aspects of a game's storyline, including key events and pivotal characters.

In the case of a departing employee, provided their agreement was properly documented, there may be specific contractual provisions preventing the use of intellectual property created in the course of their employment. Some of the information to which that employee had access may also have been provided to them in circumstances giving rise to an obligation of confidentiality, even in the absence of a written agreement to that effect.

This article sets out the author's views and does not constitute legal advice. Laws differ from country to country, and what is appropriate in one set of circumstances may be wrong in another, so please speak to a professional before deciding what is right for you.

Kostyantyn Lobov is a Senior Associate at London-based law firm Harbottle & Lewis, specialising in IP and Advertising issues. He is an avid gamer (when life allows it) and sometimes tweets games-related things on @IPLawyerKostya.

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