Protect your app or game play as an EU trade mark

Since 1 October 2017 brand owners have been able to protect motion and multimedia marks at EU level. This is due to the fact that the EUIPO has removed the need for trade marks to be represented graphically. This means that no longer are EU trade mark registrations being obtained for only traditional names and logos. Moving images and videos can now be protected provided they meet the sizing requirements. This has opened the door to new types of EU trade marks including for mobile phone apps and computer games.

For any computer game or app owner reading this, it is certainly worth considering whether you should be taking advantage of these new types of trade marks. For a video or a group of moving images to be registered at EU level, they need to be distinctive of the goods/services applied for and must not be generic or commonly used in the industry. Importantly, these types of trade marks are new and the boundaries of protection have yet to be tested.

In relation to computer apps and games, there are many examples of distinctive and unique types of game play that could benefit from EU trade mark protection. The game play in Angry Birds is an example of distinctiveness, as is the CandyCrush game. Similarly, most apps have opening and closing credits which include the company logos. Those could also be protected.

In FIFA games, the introductory titles, team selection pages, player celebrations, etc, could also arguably be protected. There are many other examples. Essentially if a computer game or app has a unique type of game play which consumers will recognise and attribute to the company, it is certainly worth considering trade mark protection. Such protection could bolster a trade mark portfolio and give the brand owner an additional right to assert, especially on app stores where games can be copied and infringed. Getting in early and protecting your unique assets is strongly advised. If an app is registered as a video mark it could be enforced against both identical and confusingly similar use. Such registrations could therefore be a powerful enforcement tool in this area, given that the app stores tend to favour these over copyright or unregistered rights alone.

So far, we have seen the following game play applications being filed:

[ADD IMAGES HERE - appGameScreenshotOne/appGameScreenshotTwo]

None of these applications have yet been accepted. This is presumably due to the fact that they display fairly non-distinctive elements of game play. Securing EU-wide protection for these registrations would therefore hinder competition in this industry. This is good news for innovators since the EUIPO are still applying the same standard of assessment to these new types of marks as they do for traditional word or logo trade marks. That said there is scope for companies to file for distinctive elements of their app and game play, especially in the early days where the boundaries of acceptance have not yet been set.

If you have an app which consumers have come to recognise as your own and can distinguish you from your competitors, you should consider trade mark registration.

In order to qualify for an EU motion or multimedia mark, the video must be in MP4 format and cannot exceed 8,000KB per second and 20MB in size. These sizing restrictions place limits on the length of a video as a result. Based on current technology for MP4 videos, videos will for now generally be less than 30 seconds in length. For motion marks, it is possible to file a sequential selection of images (as in the first example above). This could potentially extend the length of protection beyond 30 seconds – but that has yet to be tested. If your video contains sound, it can only be a multimedia mark, as that is the clear dividing line between the two types. It is only worth including sound though if the video is not sufficiently distinctive to be registered on its own.

For companies implementing a creative branding strategy, which use new technology and apps, this could be the time to review your protection strategy and consider wider protection. For certain right holders, such as those that own TV formats or computer games, the ability to protect these marks is a real asset. Often those owners would refer to unregistered rights as their strongest IP right. With the help of these new rights, they could potentially also have registered rights to assert, sell, assign or license.

Please get in touch with us if you or would like guidance on protecting a video trade mark. This article focuses on computer games and apps but there is scope for extending these new types of marks to other areas of business also. Any moving images or video could potentially be registered, if distinctive enough.

For more information on these type of marks, take a look at our earlier Brands Update article.