Trademark registration is a milestone in the development of your studio. There are plenty of potential elements that are suitable for registration. From logos to game elements (characters, sounds) to the titles of your productions.
However, it is also worth knowing how the fact – that elements of other people’s games are registered as trademarks – affects the possibility of being „inspired” by them. In a word, can you use other people’s trademarks at all? For example, is it possible to base your own game on the character of Geralt of Rivia (who is a registered trademark)?
You will learn all this and quite a lot more in our series of posts on the topic of trademarks in gamedev studio.
We will briefly tell you in today’s post:
1. What can be a trademark?
2. What does trademark registration give you?
3. Why examine a trademark before registration?
4. Where can you register a trademark?
5. What are the costs of trademark registration?
6. What is the distinctiveness of a trademark and why is it important for a mark to have it?
7. What if you order a logo that your studio wants to register as a trademark?
8. Can you create game elements based on other people’s trademarks?
9. Are parodies of other people’s trademarks legal?
10. What can a lawyer help you with?
An important note to start with: you cannot use the ® (registered) sign to designate products or services if you do not have a registered trademark. What’s more, using the ® sign without having the proper legal basis may involve criminal liability (a fine).
It is worth knowing that there is still the ™ sign (trademark). He does not indicate that you have the special protection that comes with trademark registration. So, there is no legal obstacle to you placing ™ next to the title of your game even if you have not yet registered the title as a trademark.
What can be a trademark?
A trademark is a sign that distinguishes a particular brand of a particular entrepreneur from others operating in the market. It is an element that is a kind of „promise” to the consumer that the product signed with it comes from a specific brand.
This is why trademarks have real market value; in addition to recognizability, they suggest a specific quality, prestige, and exclusivity of the product. Unfortunately, this is why trademarks are sometimes subject to imitation. All this is done to attract consumer attention.
Trademarks can be words (e.g., EPIC GAMES), graphics (e.g., the Rocktar Games logo with a distinctive R and an asterisk) or a combination of words and graphics (e.g., the Nintendo logo).
They can also be spatial forms, such as a glass Coca-Cola bottle. Trademarks today also include sounds (the roar of the Metro Goldwyn Mayer lion) or even store decor – like iSpot from Apple.
Multimedia signs are also interesting. They are (or include) a combination of image and sound. They can be submitted as an MP4 file with a maximum size of up to 20 MB. Toshiba registered a multimedia trademark with the UK Intellectual Property Office.
Some entrepreneurs have also succeeded in registration of a color. Such marks include, for example, purple from Milka and orange from… Orange. However, this is a difficult task, given the poor distinctiveness of the color in itself (we will talk about distinctiveness below, and in a separate article). An attempt to register orange as a trademark has also been made by most popular Polish marketplace, Allegro (article in Polish).
How is registration of a trademark profitable?
With the registration of a trademark, the holder obtains the exclusive right to use the trademark for 10 years, either gainfully or professionally, in the territory of the Republic of Poland (if the registration is made in Poland) or the EU (if at the European Union Intellectual Property Office).
The ten-year period of protection can be renewed by paying a fee for the next one in due course. There is no maximum limit on these extensions, so as a matter of principle, the right to a trademark can be claimed indefinitely.
Correct registration of trademark results in obtaining a registration certificate. This is a document that confirms the registration of the mark. In it you will find, among other things, the individual number under which the mark was registered, the date of registration, as well as the name of the trademark owner.
Registration certificate – what does such a document give you in practice?
When you already have a registration certificate, and it turns out that someone else is trying to make money from your trademark, you have an easier legal path to stop him from doing so and pursue possible claims. When it comes to litigation in court, you, as the initiating party, will have to demonstrate several issues to dent the case.
But the very fact that you are the holder of a given trademark and what the scope of your monopoly on its commercial use will come from the formal protection you have obtained for your trademark. It is the protective right to a registered trademark that you have confirmed in the form of a certificate.
How to check if someone is trying to register a similar trademark?
Sometimes competitors want to register a mark confusingly similar to yours, especially to mark the same products or services as yours. You can block this.
Many trademark owners delegate monitoring whether competitors are applying to register similar marks external entities – to specialized law firms. And if such situations are identified (and this is especially evident in official registries), there is an immediate legal response. We will write about this in a separate post.
Go global? Territorial aspect of trademark protection
Before deciding to register a trademark, it is worth considering what area of protection you are interested in. A trademark is worth registering where the target audience of your productions is or will be located. All because trademark protection is territorially limited.
A trademark is protected only in the area for which the relevant office has jurisdiction. This is a very important aspect of trademark protection, which is why we write more about it below, but we will also elaborate on this topic in future posts.
Why examine a trademark before registration?
Before deciding to register a trademark, before choosing its final form: whether it will be a word or a graphic – it is worth examining it in the context of how it compares on the market and in official registries.
In fact, it is also worth doing this before using the sign. The idea is to determine whether there is a collision with other already registered marks. And if there is such a collision, to what extent – in particular, regarding the subject matter and territorial scope of protection of the mark in question.
Examining the registrability of a mark saves time and money. Because if it turns out that a mark conflicts with another, you need to think about what you will do as a result. Perhaps it is worth it after all to register the mark in a territory where this collision does not exist. Or perhaps it is worth modifying the sign.
Either way, being aware of such risks allows you to manage them. A solidly executed research allows both to maximize the chances of successful registration, but also to minimize the risks – such as letters with opposition (or cease and desist letters) from owners of similar registered marks.
The result of the study is a report (which we call) “red flag report”. It contains an analysis of the mark in terms of the existence of absolute grounds as well as relative grounds to refuse the registration, but also an evaluation of the chances for registration as proposed. In such reports we show “bird’s-eye” how the mark looks on the market and official records. We advise what decision to make when there are legal risks associated with registration.
If there are absolute grounds of refusal to registration – that is, those that do not allow the granting of protection rights at all, such as the wording of the mark contains a vulgarism, a state or religious symbol – we point this out and advise on how to rectify them so that the office responds positively to your application.
In turn, with the existence of relative obstacles to registration – concerning, for example, identity with an existing mark – we suggest how to avoid them, what to do and how to modify them in order to avoid a situation in which the competition raises a legitimate objection and blocks the registration of your trademark.
Where can you register a trademark?
If you register with a Polish office (the Polish Patent Office), you get protection only for the territory of Poland. Wider protection, because for the entire territory of the European Union, is provided by registration with the EUIPO (European Union Intellectual Property Office).
Outside the EU, on the other hand, registration takes place at the offices competent for intellectual property – for example, in the US it is the USPTO (United States Patent and Trademark Office).
Polish Patent Office
The Patent Office of the Republic of Poland is our local institution for, among other things, granting protection for trademarks. Wanting to register a mark in Poland, you file an application to this very office. Don’t be afraid – this is not another ordinary office with queues and poor organization.
The Polish Patent Office is one of the most efficient offices, and you can register a trademark in a few months, already including the 3-month opposition period, which is mandatory according to the trademark registration procedure. This is especially smooth if the application for registration is filed online, choosing fast-track (an accelerated procedure for processing applications).
European Union Intellectual Property Office – EUIPO
The fast-track procedure is also offered by the EUIPO. This office, based in Alicante, Spain, also works very efficiently. In particular – in terms of handling electronic applications. Our record so far is the registration of a European trademark in just 3.5 months from the date of sending the application (including the opposition period).
If your mark can be classified in existing categories, included in the office’s harmonized list, you can apply for registration just in this fast-track mode. If you don’t know how to navigate the forms – a professional attorney included in the official list of EUIPO professionals can help you. Ewa Krzemień, one of the authors of this blog, belongs to this group. You can find her profile in the EUIPO database here.
Sometimes the choice of whether to register in Poland or throughout the EU is strategic. It may turn out that your studio’s titles and services have a market only in Poland. On the other hand, registering a mark immediately for all EU member states is tempting, because, after all, it also covers Poland.
World Intellectual Property Office – WIPO
Legal protection of trademarks in other countries, outside the EU, is handled by WIPO (World Intellectual Property Office), based in Geneva, Switzerland. Unfortunately, this no longer works as in the case of the harmonized EU market (where we file one application), but in each country the mark must be registered separately. WIPO forwards the application for registration to the relevant office in the particular country where you want to obtain trademark protection. Such an application will be processed in accordance with the laws of that country, by the relevant office, under the terms of the locally applicable regulations.
Trademark registration costs
The cost of registering a trademark varies depending on several factors.
First, the costs depend on the office granting protection. Different will be the cost of registering a trademark on territory of Poland when applying for protection to the Polish Patent Office, different in proceedings before the EUIPO, which provides protection for the entire area of the European Union, and different in other individual countries.
The second factor on which the cost of registering a mark depends is the classes of registration. Signs in the form of trademarks are always claimed in specific classes of goods or services (depending on what your mark is to be used for). It is the Nice classification that is used to distinguish between them.
The more classes you want to „monopolize” for yourself, the higher the fee. For example: class 9 includes tablets, computers, digital signs, among others. And dozens of other products. Class 14 includes watches, patch jewelry; and class 41 includes, for example, book publishing, film directing, game library services and game services offered online via a computer network.
Importantly, the Nice classes do not coincide with the PKD classification we use in Poland when registering a company in the KRS. And if you omit a branch of your studio’s business in your application to the authority, the protection of your brand will not automatically extend to other areas, even if similar, but included under a different Nice classification number.
In addition, in some offices – for example, the Polish Patent Office – the amount of fees also depends on whether you file a trademark application in paper or electronic form.
Electronic registration is cheaper in Poland: filing a trademark application in one class in paper form is an expense of PLN 940 for the fee to the Office, while in electronic form it is PLN 890.
Similarly, at the EUIPO, paper trademark registration in one class is €1,000 and electronic registration is €850. We summarized the total costs of registration in Poland versus the EU in this article (in Polish).
What is trademark distinctiveness and why is it important for a mark to have it?
The most important feature that makes you a good type for a trademark is its distinctiveness. This is the characteristic of the mark that makes it possible to distinguish your product from others available on the market, but also the originality of the sign and the lack of triviality.
Original distinctiveness is the premise based on which offices either approve or reject applications for registration of a mark. A trademark lacks original distinctiveness if, among other things, it is purely descriptive (obvious, such as „gaming mouse” for that type of mouse), filed in bad faith (to control the market), or such that it cannot be represented in the register (e.g., smell according to the European Court of Justice).
This makes it imperative for the authority to reject the application, because the designation simply does not meet the relevant requirements by law. Such risks preclude a positive passing of the registrability test – and they are worth keeping in mind, because sometimes it may seem that a mark is unique and certainly registrable.
Acquired distinctiveness, on the other hand, is the acquired character of a mark after some time of use, which makes the consumer associate the sign with your goods or services, even if this was not obvious from the beginning of its use.
In this case, we have a situation where initially the symbol or word lacked primary distinctiveness as to the goods or services in question, but after some time of operation in the market, consumers perceive it as unique and completely distinctive.
The problem of secondary distinctiveness can arise, for example, if you have released a game or app whose name is too descriptive or slangy. But over time, audiences have become so used to it that they already know it’s your brand and identify the title bearing this mark specifically with your studio and your product.
This is a unique situation in which the office can register a mark that lacked the original distinctiveness but acquired it secondarily. However, you need to know that such a process is not easy, plus it is time-consuming. This is because it is not about the intensity of the associations, but about their long-term and established existence in the minds of the public. Proving secondary distinctiveness is very difficult and not always possible. It requires considerable financial and time investment.
For more details and tips on distinctiveness, please see our next post.
What to do when you order a logo that your studio wants to register as a trademark
We know from experience that the myth of the invoice as sufficient for acquiring rights to graphics, logos or assets is still quite common in practice.
What is the point? Imagine a situation that a graphic designer creates a visual identity, logo, or some assets for your studio, and you want to use these elements in the game, because „after all, they are yours”. And in addition, you want to register, for example, such a logo of your studio as a trademark. You ordered it, received it and paid for it, so it would seem that it belongs to you, and you can do whatever you want with it.
But are you sure? Well, unfortunately no.
In Polish law, we have a rule that a written form of agreement is necessary to transfer copyright in scope of the economic rights. The invoice itself does not provide such a requirement, nay – the invoice is not a contract. This is very important, among other things, from the point of view of a logo as a trademark.
If you order a logo or corporate identity, which, in addition, your studio will want to register as a trademark (and such a situation is not uncommon at all), it is essential to make sure that a „real written contract” is concluded with the graphic designer. In it, you should additionally include a clause, allowing in addition the registration of works as trademarks.
Out of caution, we recommend that such a solution be used every time. So that a situation does not arise where a graphic becomes highly recognizable, you do not have the copyright to it, and you would like to register it as a trademark – because then it may happen that the graphic designer suddenly raises his rates or even directs claims to you related to the use of the mark. To which he is entitled in such a situation since you did not have a written agreement beforehand.
You need to know that a trademark cannot be registered if it violates the rights of third parties. In short, it is a situation where someone other than the owner of the mark has rights to it.
And this will be the case if the creator has not transferred to your studio the economic copyright to his graphic works. Take care of this in advance – the sooner you obtain these rights the better, and your relationship with the creator of the identification will not be put to the test.
If you’re reading this and thinking to yourself – well, the game is up, the invoice has been paid, the contract hasn’t been signed, and the graphics in use… then know that it’s not too late to legally register such a logo as a trademark. If this is the case, contact a lawyer who will help you prepare a proposal for a suitable agreement with the creator, which will ensure your rights and safe use.
Can you create game elements based on other people’s trademarks?
A very important aspect in game production is the use of other people’s elements, which may be registered trademarks after all. This is how, for example, Geralt of Rivia (a trademark belonging to CD Projekt Red) was „borrowed” for the title Soulcalibur VI. You need to know that such collaborations are only possible with the permission of the trademark holder.
How to go about it?
Certainly, think first and foremost about whether licensing someone else’s trademark pays off for you. Remember that it’s usually the case that the more recognizable the brand, the higher the costs associated with obtaining a license from it.
Before approaching a trademark owner, determine what kind of budget you have for such an eventuality and whether the anticipated profits from your game will cover the licensing costs. In addition, the larger the licensor, the more extensive the contractual clauses and legal loopholes. The assistance of a lawyer in negotiating such an agreement will be rather essential.
So, is it possible to avoid the costs associated with licensing someone else’s products in games? Of course. For example, it would be enough (if it was that easy…) to create your own products and brands exclusively for the game. Introducing fictional brands into the title costs nothing – because it’s a new piece, based on your (or your team’s) idea.
GTA is famous for such (in addition, parodied) products. Why license the Budweiser brand when Pißwasser Pils is better suited to the game’s theme? Be careful, though, because it’s not at all obvious, and more than one such production has involved legal battles over rights.
And for more on acquiring rights to assets – not just being trademarks – see our article available here (in Polish).
Are parodies of other people’s trademarks legal?
Speaking of parodies… Parody is one of the types of permitted uses of copyright law. This means that Polish copyright law, under certain conditions, allows you, as the creator of a game, to use someone else’s element, assuming in addition that the alteration of someone else’s work is actually intended to amuse the user, and that it can be easily distinguished from the parodied original.
But when trademarks come into play, another level of protection begins – this is due to the Industrial Property Law. This is because the right to a trademark gives its owner a „monopoly” on the use of the trademark for commercial purposes.
So, if there is a commercial use of a work that is also a trademark, a trademark parody is unlikely to be an effective way to legalize the use of someone else’s mark. This is true in Poland as well as in Europe. On our continent, we have a very conservative approach to this subject. To put it simply – continental legislation considers it economic “parasitism”.
It is quite different overseas. In the States, this issue is strictly regulated by law. In reports of cases like Chevy Vuiton v. Louis Vuitton, among others, we read that there have been rulings stating that it is not an infringement to make commercial use of another’s trademark. This is quite a controversial approach, after all, doing business on someone else’s work seems to be „unfair.” One thing is certain – whether in the EU or in the US, such cases are very individual, and one has to be very careful with parodying other people’s trademarks. Business risks are always high in such cases.
You can read about how to safely parody other people’s creations (but not trademarks) in games in this article (in Polish).
What can a lawyer help you with?
Before deciding to file a trademark for registration with the competent authority, it is necessary to examine the availability of the mark and its registrability, also in terms of possible similarities with existing marks.
A lawyer specializing in these issues will guide you through the process and help you minimize these risks, suggest possible modifications, but also – after discussing your needs and in cooperation with you – provide you with a concrete list of classes in which it is worth registering your mark.
As trademark experts, we can not only conduct such a trademark examination, but also help you register your studio’s trademark both in Poland and in the European Union.
If you need even broader (or different) protection, we will contact an appropriate foreign lawyer on your behalf to help you register your trademark outside the EU or in selected European countries. In such a situation, we will help coordinate the process.
We will also prepare an agreement under which your studio will acquire the relevant rights to the sign you want to apply for protection (such as logo).
And if you wake up a little too late without an agreement with the author of your trademark, we’ll make sure to prepare the appropriate agreement as well, to ensure that you have the right rights and safe use of them.
However, don’t leave such matters to the end and unattended, because you may have to pay a lot more for such acquisition of rights than if you had taken care of it at the beginning, or that someone will come to you with claims.
In the situation of claims, too, of course, we can help you – both those that someone will make against your studio and those that your studio will direct at potential infringers. This scenario, however, is one we do not wish on you at all.