Game companies and intellectual property rights, part III: what should game companies know about trademarks?
After a game company has first ensured through necessary contractual arrangements that it really owns all rights to the intangible capital resulting from the company's operations (part I of our blog series) and has gained an understanding of what is protected by copyright (part II of our blog series), it is wise to give some thought to the world of trademarks and branding.
Competition in the global gaming market – especially in the mobile gaming market – has intensified significantly in recent years and success has become increasingly difficult. For example, hundreds of new mobile games appear in Apple’s App Store every day. In addition, game companies do not just compete with each other for consumers’ attention; basically all companies producing entertainment and leisure products and applications are part of the competition. To succeed in this competition, individual game companies are required to possess increasingly larger marketing resources and a systematic trademark strategy.
Trademarks and their registration are the cornerstones of brand building, which ensure that resources used to market a game or product do not go to waste. A correctly registered trademark gives a game company the right to prohibit other parties from using identical or similar marks in the sale and advertising of games or similar products. For example, it can be used to prevent competitors from entering the market with names that are too similar. Trademarks are also valuable business assets as they can be licenced. For this reason, it is particularly important to pay attention to selection and protection of your trademark (e.g., the game’s name or logo) when the game is still in development.
Below, I explain five key measures that companies should follow to ensure that their trademarks are sufficiently protected.
1. Begin name/trademark planning at an early stage
Companies should start planning trademark protection as early as possible, preferably while the game is still in its conception stage. The company must consider what (e.g., a name, graphic design, or logo) needs trademark protection, which products the mark will be used with, and in which geographical area is protection needed. Keep in mind that a trademark is a regional exclusive right, so registration in principle only provides protection in the countries where the mark has been registered. It is not necessary to register in all countries, but it makes sense to focus registrations on countries that are most important to your company's business. Thus, when planning the name of a game or product, you should choose a memorable and distinctive name or mark (e.g., a logo), do some preliminary research to find out whether it is available, and register it as a trademark in your company's key markets. When considering the name or mark, it is useful to make a list of potential options that can be given to an expert, who can then determine their eligibility for registration. This way, when one of the options turns out to be unusable, an alternative already exists.
2. A trademark must be distinctive
One of the key requirements for trademark registration is that the trademark must be distinctive. Trademarks that simply represent the type, quality, quantity or purpose of a product or service, or are minor alterations of existing trademarks, have usually been found indistinctive. For example, the name ‘Puzzle Game’ would be a very poor choice for a puzzle game trademark. Generally speaking, the strongest word trademarks are those that do not mean anything (e.g., Nintendo or Xbox). In general, experts will comment on the distinctiveness of the mark if they are carrying out the preliminary research.
3. Take care not to infringe third party rights: carry out preliminary research!
Trademarks must not be confused with other earlier trademarks or business names. It is therefore important to determine whether the proposed mark is available in target areas before launching a game or product. Potential for confusion is usually assessed in light of the similarity between the marks being registered and the products and services that they cover. The task of carrying out more comprehensive preliminary research into to the registration of a potential trademark should always be given to an expert, who is familiar with trademark legislation, but an initial search can be carried out at TMview’s-site. There you can find a relatively comprehensive and free database of trademarks. Although this database does not include the trademark register of every country, it includes enough of them to make it a good place to start. In addition to identical matches, you should search for similar marks (i.e., fuzzy search).
4. Put effort into preparing the classification: the trademark protection area will depend on the classification!
Trademark classification is based on the so-called Nice Classification system, which is used to classify all goods and services in the world (total of 45 classes). Trademark applications should always clearly indicate the products or services for which trademark protection is sought. When planning trademark protection, you need to be aware of products that are already protected by trademarks or are likely to become protected in the coming years. Products and services for which trademark protection is sought should be selected according to this. The exclusive right granted by registration is limited according to the products and services covered by registration, so it is recommended that you ask an expert to help prepare the classification. People can of course also complete the classification by themselves in which case it is worth using the European Union Intellectual Property Office’s (EUIPO) free TMclass classification tool, where you can find out what class each product or service falls into. The tool can be found on TMclass’ site.
For example, the names of mobile games are usually registered as trademarks in at least classes 9 (e.g., ‘computer programs’) and 41 (e.g., ‘providing online computer games’). However, the extent of the classification ultimately depends on your company’s strategy. For example, if the same trademark is also going to be used for board games, the mark must also be registered in class 28 etc.
5. After registration: use trademarks correctly and ensure your rights are monitored!
Trademarks intrinsically involve a forced use requirement, that is, the trademark must be used and used in the correct way. At worst, not using a trademark or using it in the wrong way may result in the loss of registration. The main rule is that trademarks must be used in the way intended when registered. Small changes are allowed, as long as the changes do not affect the mark’s overall impression. However, it is safest to use a trademark in the registered way. The correct use of a trademark is particularly important when the mark is registered as a logo or contains graphic designs. Pure word marks can instead be used in principle in any way.
In addition, it is useful to distinguish a trademark from other text or marketing material in such a way that the target audience perceives it as a trademark. This can be done, for example, by writing the mark with a capital letter or by using the symbols Ô or Ò in connection with the mark. It should be noted that Ò symbol should only be used when the mark is registered in the country in question. For example, if the trademark is only at the application stage, Ô symbol should be used instead.
It is also essential to monitor the use of trademarks after registration and address potential violations in a timely manner. Part IV of our blog series will focus on how to monitor these rights, so stay tuned!