board game
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Stanley Knife
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board game
Hi guys. I am currently developing a new board game. The name I would like to use for the game is a very common word that can be found in any English dictionary. I am aware (after perusing this site thanks) that the design of the name can be copyrighted but not the actual word. This however does not fill me with confidence that my game could be copied, with numerous versions on the market should it prove successful. Should I be confident in the process, or should I come up with an entirely original name. I'm struggling to think of a word more suited than I have in mind. Any advice would be much appreciated. Also, is there a good resource with links to infringement cases where individuals won against big companies? Or does that never happen?
Hi Stanley,
The best protection for the name of your game is to register it as a trade mark. You can use the Intellectual Property Office website to discover if your word has already been registered, and if not, then you can use the same place to register. There are a number of hoops to go through concerning what may be registered, but basically so long as your word is not overly rude or offensive, and is not descriptive of the product (for instance no-one could register 'Cow's Milk' for the white diary product which now comes in plastic containers but once was found in milkbottles), you should be able to register it in whichever classes you think are appropriate. The obvious one is class 28: games and playthings. The more classes you add, the higher the fee. And don't be tempted to register the mark in a class 'just in case' because that could backfire on you if you fail to market goods within that class using the registered mark, and another company challenges the validity of the registration.
Bear in mind that an IPO registration only protects your mark in the UK. If you feel this is insufficient, you will need to also register the mark in those countries where you anticipate marketing your game. For other member states of the EU, you can use the Community Trade Mark (CTM) system. More details can be found on the IPO website.
If you think the cost of registering a trade mark is too great at the moment, you can do it later once your sales take off. If in the mean time you manage to build up a certain amount of goodwill in your business, and someone else tries to market something remarkably similar using the same name, you might well be able to challenge them for passing-off. This can be tricky for a start-up because one of the key ingredients for a claim is that you have goodwill in your product. This means that your game would need to be known by name to a reasonable proportion of the target audience. The next step involves proving damage to your goodwill due to the actions of the other company, but this is much easier once you have established the goodwill in your own product/brand.
As for a list of infringement cases between small companies and big ones, I can't think of anything like that offhand. In reality a large percentage of infringement cases probably fall into that category, especially where trade marks are involved. One particular David v Goliath type dispute is known as the Golden Balls case. You can read the background here or here, but the matter has been appealed to the General Court of the Court of Justice of the European Union and a final decision won't be known until the end of November.
The best protection for the name of your game is to register it as a trade mark. You can use the Intellectual Property Office website to discover if your word has already been registered, and if not, then you can use the same place to register. There are a number of hoops to go through concerning what may be registered, but basically so long as your word is not overly rude or offensive, and is not descriptive of the product (for instance no-one could register 'Cow's Milk' for the white diary product which now comes in plastic containers but once was found in milkbottles), you should be able to register it in whichever classes you think are appropriate. The obvious one is class 28: games and playthings. The more classes you add, the higher the fee. And don't be tempted to register the mark in a class 'just in case' because that could backfire on you if you fail to market goods within that class using the registered mark, and another company challenges the validity of the registration.
Bear in mind that an IPO registration only protects your mark in the UK. If you feel this is insufficient, you will need to also register the mark in those countries where you anticipate marketing your game. For other member states of the EU, you can use the Community Trade Mark (CTM) system. More details can be found on the IPO website.
If you think the cost of registering a trade mark is too great at the moment, you can do it later once your sales take off. If in the mean time you manage to build up a certain amount of goodwill in your business, and someone else tries to market something remarkably similar using the same name, you might well be able to challenge them for passing-off. This can be tricky for a start-up because one of the key ingredients for a claim is that you have goodwill in your product. This means that your game would need to be known by name to a reasonable proportion of the target audience. The next step involves proving damage to your goodwill due to the actions of the other company, but this is much easier once you have established the goodwill in your own product/brand.
As for a list of infringement cases between small companies and big ones, I can't think of anything like that offhand. In reality a large percentage of infringement cases probably fall into that category, especially where trade marks are involved. One particular David v Goliath type dispute is known as the Golden Balls case. You can read the background here or here, but the matter has been appealed to the General Court of the Court of Justice of the European Union and a final decision won't be known until the end of November.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Stanley Knife
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Hi, and thank you for the speedy and very helpful reply. I think I'd like to go down the - market the product myself - route. I think it would be a nightmare trying to copyright this word, unless perhaps I changed the spelling slightly.
Let's say I changed Baggage to Baggij; I wonder if that would help?
Thinking about it, there are lots of board games with common words, such as Scrabble, Boggle, Monopoly etc. I assume the structure or nature of the game is protected not the actual title itself, and I'm confident that mine could have the same protection.
Let's say I changed Baggage to Baggij; I wonder if that would help?
Thinking about it, there are lots of board games with common words, such as Scrabble, Boggle, Monopoly etc. I assume the structure or nature of the game is protected not the actual title itself, and I'm confident that mine could have the same protection.
Hi again Stanley,
Can I just correct you about the copyright bit. Copyright is automatic for certain creative works, of literature, music, art and drama. You can't 'copyright' something, it either qualifies or it doesn't. In your case a single word, however unusual, is not going to qualify as a literary work. There is a well-known case know as Exxon Corp. v Exxon Insurance Consultants International Ltd in which it was held that even though Exxon was a made up name it could not attract copyright.
That was why I recommended the trade mark route. Once registered, trade marks offer a near monopoly to the owner and can in theory last for as long as the owner remains in business. There is expense involved but it isn't complicated to apply for a trade mark. And as I say, it doesn't have to be registered from the outset.
It is possible for an unregistered trade mark to be protected under common law, although this amounts to the same thing as passing-off which I described briefly in the last posting.
As for the game itself, copyright can protect a certain amount. For instance any graphics or printed rules would certainly qualify. But the 'idea' of the game alone is not protected and could be copied by another person if they created entirely different graphics etc (for example here: Risk clones). It is possible that the design of any 3D counters which are moved around the board could be protected by Design Right, provided that they are sufficiently novel. Yet despite these seeming disadvantages, I am not aware of many cases involving disputes over copied board games.
Computer games have far stronger copyright protection than board games because they are fundamentally some software, graphics and music all of which are eligible for copyright protection (see the Mazooma Games case). And yet ironically there have been far more cases about computer games, possibly because of the perception that there is more money to be made from such products.
Can I just correct you about the copyright bit. Copyright is automatic for certain creative works, of literature, music, art and drama. You can't 'copyright' something, it either qualifies or it doesn't. In your case a single word, however unusual, is not going to qualify as a literary work. There is a well-known case know as Exxon Corp. v Exxon Insurance Consultants International Ltd in which it was held that even though Exxon was a made up name it could not attract copyright.
That was why I recommended the trade mark route. Once registered, trade marks offer a near monopoly to the owner and can in theory last for as long as the owner remains in business. There is expense involved but it isn't complicated to apply for a trade mark. And as I say, it doesn't have to be registered from the outset.
It is possible for an unregistered trade mark to be protected under common law, although this amounts to the same thing as passing-off which I described briefly in the last posting.
As for the game itself, copyright can protect a certain amount. For instance any graphics or printed rules would certainly qualify. But the 'idea' of the game alone is not protected and could be copied by another person if they created entirely different graphics etc (for example here: Risk clones). It is possible that the design of any 3D counters which are moved around the board could be protected by Design Right, provided that they are sufficiently novel. Yet despite these seeming disadvantages, I am not aware of many cases involving disputes over copied board games.
Computer games have far stronger copyright protection than board games because they are fundamentally some software, graphics and music all of which are eligible for copyright protection (see the Mazooma Games case). And yet ironically there have been far more cases about computer games, possibly because of the perception that there is more money to be made from such products.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Stanley Knife
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- Joined: Sat Nov 08, 2014 10:54 am
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Stanley Knife
- New Member
- Posts: 5
- Joined: Sat Nov 08, 2014 10:54 am
Hello again Andy, I am just about to register the name of my game. I have searched for it and can't find it on the site, but I notice at the bottom of the page it says "Fees are non refundable and don't guarantee registration of your trademark" Would I be right in assuming that this should only apply if there is a trademark I have missed in my search, or is currently being processed?
Hi Stanley,
The trade mark search tool on the IPO website is pretty good, and as long as you leave the search type set to 'similar' it should show up any variations on spellings and 'sound-alikes' for the word you want to use. When doing the first coarse-grain search don't select any classes, and that way you will see if there are any potential trade mark challengers in other classes unrelated to the one you wish to register in. The listings include everything* except an application which is so new it hasn't yet been entered onto the database. Applications which are going through the pre-registered stages will be shown as 'examination', 'application published' or 'opposed' in the status column.
So assuming that you have made sure your word doesn't fall into one of the unacceptable categories, you are probably reasonably safe to go ahead and apply to register. However the main area of uncertainty lies in not knowing whether another trade mark owner will oppose your application. For example, say you had chosen the words "Golden Balls" and wanted to register them. Would you expect an opposition from a French company who had previously registered the Community Trade Mark "Ballon d'Or"? Possibly not. But as I mentioned in an earlier reply on this thread, that is exactly what happened in a case which has gone all the way to the Court of Justice of the European Union and still hasn't been resolved.
And yes, unfortunately you will lose your fee if your mark is successfully opposed, because the IPO will have incurred administrative costs in processing the application that far. However, if it's any comfort, an opposer also has to pay a fee (£100) so in theory this should eliminate frivolous oppositions.
* As a double check on pending applications, also have a look at the latest version of the IPO's Trade Mark Journal
The trade mark search tool on the IPO website is pretty good, and as long as you leave the search type set to 'similar' it should show up any variations on spellings and 'sound-alikes' for the word you want to use. When doing the first coarse-grain search don't select any classes, and that way you will see if there are any potential trade mark challengers in other classes unrelated to the one you wish to register in. The listings include everything* except an application which is so new it hasn't yet been entered onto the database. Applications which are going through the pre-registered stages will be shown as 'examination', 'application published' or 'opposed' in the status column.
So assuming that you have made sure your word doesn't fall into one of the unacceptable categories, you are probably reasonably safe to go ahead and apply to register. However the main area of uncertainty lies in not knowing whether another trade mark owner will oppose your application. For example, say you had chosen the words "Golden Balls" and wanted to register them. Would you expect an opposition from a French company who had previously registered the Community Trade Mark "Ballon d'Or"? Possibly not. But as I mentioned in an earlier reply on this thread, that is exactly what happened in a case which has gone all the way to the Court of Justice of the European Union and still hasn't been resolved.
And yes, unfortunately you will lose your fee if your mark is successfully opposed, because the IPO will have incurred administrative costs in processing the application that far. However, if it's any comfort, an opposer also has to pay a fee (£100) so in theory this should eliminate frivolous oppositions.
* As a double check on pending applications, also have a look at the latest version of the IPO's Trade Mark Journal
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Stanley Knife
- New Member
- Posts: 5
- Joined: Sat Nov 08, 2014 10:54 am