This is a guest post from Hansel Henson, intellectual property and media lawyers who specialise in protecting IP in the internet, sports, fashion, games, film, TV, branding and entertainment sectors.
As a developer, should you register trademark protection for app and game titles published in market places for smartphones and tablets?
"It is not a defence to trademark infringement to say that in choosing your app title you decided not to register it as a trademark. Accidental infringement is no defence either"
In a sentence, what we say to app developers is this: choose a catchy, distinctive name for your app, check whether it is available to use, and then consider protecting it with a registered trademark.
In a crowded marketplace everyone wants to distinguish their product from the rest of the pack, and registering trademarks is the best way to protect your investment in a distinctive title.
App Titles as Brands
When you consider your branding approach, the origins of the app or game title are an important consideration.
Some app titles will come to the marketplace with trademark protection already in place. Good examples would be Disney titles that start as (or which are launched in conjunction with) Disney films, and also famous brands in other sectors who feel they need a gaming presence for marketing purposes.
For other app titles, Apple or Google may be the starting point for a brand that will be stretched into many other product and entertainment areas. Angry Birds is a good example, with the first official Angry Birds Land theme park recently opening in Finland.
At the time of writing we looked at the top three paid and free game apps on Google Play:
- Top Paid: Wreck-it Ralph (Disney); Minecraft - Pocket Edition (Mojang) and Grand Theft Auto III (Rockstar Games)
- Top Free: 4 Pics 1 Word (Lotum); The Simpsons - Tapped Out (EA); and Temple Run 2 (Imangi Studios)
Of these, all bar 4 Pics 1 Word are protected by registered trademarks for mobile games and for a variety of other merchandise, goods and services.
Registration - Things to Consider
A registered trademark provides protection for an app title if it is distinctive of the app it is used to identify. The benefits of registration are discussed below. First though, we look at some of the issues to consider when choosing an app title irrespective of whether or not you wish to register it is a trademark.
Trademark Searches: Is Your App Title Free to Use?
The first rule to remember is that trademarks are registered on a first come, first served basis.
If you choose an app title that is already in use (and/or is already registered as a trademark) you may receive a Cease and Desist letter which is likely to force an embarrassing re-brand for fear of facing trademark infringement or a passing off action in the courts. A complaint by the rights owner to Apple or Google may also see your app simply taken down and cause wider implications for your publisher status in the market place.
Here, initial legal advice and trademark due diligence is key. Trademark searches help minimise the risk of investing in a name that is already taken by a third party who may look to enforce their prior trademark rights against you.
For the uninitiated, it is important to remember that it is not a defence to trademark infringement to say that in choosing your app title you decided not to register it as a trademark - so beware. Accidental infringement is no defence either.
The Descriptiveness vs Distinctiveness Conundrum
An app publisher wishing to reach a global audience should be aware that trademark laws do not protect brand names that describe the product or service they identify. For example in relation to a car racing game app, Car Racing would be descriptive however a title like Smash Cops would be distinctive.
This can present an app publisher with a conundrum. Do they give their title a descriptive name in the hope it appeals to a broader audience (especially among non-English speaking players who may more easily identify with the title) or choose a more distinctive name which makes a trademark more enforceable and registerable.
"Do you give a title a descriptive name in the hope it appeals to a broader audience or choose a more distinctive name which makes a trademark more enforceable?"
If quickly building a user base by focusing on installs is of prime importance, the descriptive route may seem appealing. Inevitably, there are likely to be a small minority of app titles that are unimaginative and descriptive which supporting analytics show to be successful.
However, if you take the view that a quality app will attract users through reputation and word-of-mouth then a distinctive title is much more important.
The rights owner needs to balance the benefit of potential short-term gain against the risk of a title that loses appeal over time, is easily copied, and cannot be protected or is difficult to extend out of apps into other media like films, books and merchandising.
Registration: The Pros
A registered trademark is a business asset, and particularly so, if it is carefully exploited and carefully enforced.
Others who infringe your mark can be stopped and may have to pay you damages if they 'use' an identical or similar app title to yours. The idea of 'use' is wider than just to enable you to stop people who copy your app title and use it with another app. It extends to 'use' of the mark for similar goods/services and in domain names and social media handles. The latter can help you prevent people from attempting to divert users searching for your app to their own app.
It can be a significant advantage when discussing licensing terms in other countries when the licensee asks what protection there is if he faces infringing copycats. A registered trademark is an essential requirement if you want to build a global brand using your app title.
"A registered trademark is an essential requirement if you want to build a global brand using your app title"
The European Union trade mark (or "CTM" as it is known) provides coverage across all 26 EU member states (including the UK). The trademark system also provides some flexibility allowing you to register inexpensively in your home country and then later use international trademark treaties to extend protection to other countries. If you do this within certain time periods your application may be backdated to the date of your 'home' trademark. This allows you to assess the popularity of your app, decide whether extending territorial protection is worthwhile and spread the cost.
Registration: Are There Any Cons?
There are no downsides to registering trademarks if the purpose of the mark is understood, carefully chosen, researched, protected, exploited and enforced.
However, careless enforcement and the misunderstanding of a trademark's reach can be catastrophic. It can lead to a PR backlash and damage to sales and your brand if pursuing an infringer far exceeds the harm the infringer is doing. Games Workshop recently found this out when they attempted to enforce their "Space Marine" mark.
Trademarks Are Not The Whole Story...Your Icon, Game Characters and Other Elements of Your App Should Also Be Considered
The icon identifying the app can be as important as the app title. If the icon is original to the publisher and suitably distinctive then the icon itself may attract trademark rights and be registrable.
Characters within a game app may take on a life of their own and becomes brands in their own right requiring protection whether individually or as a family of trademarks.
In addition, icons and characters are likely to be copyright works enabling you to use copyright to stop any copycat who copies your icon and characters when launching a rival app. If you use a third party design house then you must get them to assign the copyright in it to you.
The design of the icon and the character may also attract registered design right protection which is a protection often ignored.
Hansel Henson are a specialists firm of solicitors with a sole emphasis on intellectual property and media law, undertaking both contentious and non-contentious work across the range of intellectual property rights and consumer-driven media - from internet, TV and entertainment, to fashion, sport, gaming, and branding. For more information, contact them directly.