How multimedia trade marks could kill cloned games

Adding 'multimedia' in front of anything is usually a good way to make it sound dated, but the recent introduction of new-style multimedia trade marks for the EU could be an important development for the games industry.

The change comes about as a result of new legislation which relaxed the registrability criteria for EU trade marks last year, by removing the requirement for marks to be capable of being represented graphically.

Non-traditional trade marks (like sounds, 3D shapes, or even smells) have been available for some time, but the 'graphical representation' requirement was always a hurdle. It usually meant that applicants had to resort to using convoluted combinations of still images and explanatory text. Now, trade marks can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

This has paved the way for new types of trade mark application, including fully rendered gameplay videos with sound. An example of these is EUTM application number 017282203 for the following video clip:

Video credit: Christopher Kingsley, Jason Kingsley and Rebellion Developments

Essentially, this is an application to register a 25-second video clip depicting the 'kill cam' mechanic from the Sniper Elite series. The application covers various goods and services in Classes 9, 28, 41, including a broad list of game types in class 9, and 'entertainment' services in Class 41.

This is an exciting prospect for a few reasons. Gameplay mechanics are notoriously difficult to protect, because they tend to fall through the gaps between various IP rights. Patents can be very powerful, but have stringent requirements as to novelty and the fact that the invention must contain an inventive step, not to mention that "a scheme rule or method for ... playing a game" is excluded from patentability by law. Patents can also be expensive and take a long time to obtain, as a result of which many (though not all) patents in the games sector tend to focus on underlying technologies and hardware.

Copyright is great for protecting source code, images, videos, text, music and other creative elements within a game, but it generally does not extend to protecting underlying ideas or mechanics. Similarly, designs (whether registered or unregistered) generally only protect the visual appearance of a product or in-game element, as opposed to how it works.

"Trade marks are quick and cheap to register, easier to enforce, protect against confusingly similar marks, and can potentially last forever"

This, in part, is the reason for the game cloning epidemic which exists today.

Trade marks, on the other hand, are relatively quick and cheap to register, easier to enforce than unregistered rights, protect not only against identical but also confusingly similar marks, and can potentially last forever if properly maintained. A trade mark which covers rendered video of an essential gameplay mechanic could be a powerful tool in the Intellectual Property armoury of any developer or publisher.

It should be said that registering trade marks of this sort is not going to be plain sailing (it is interesting to note that this one is still under examination despite having been filed in October last year, which suggests that it may have encountered some resistance from the registry). The mark being applied for still has to meet the basic requirement of being a 'sign' capable of distinguishing between the products or services of different businesses. In other words, consumers who see the mark must be able to recognise the product or game to which it is applied as coming from a particular commercial source.

This means that visuals of gameplay/mechanics which are already in widespread use by others in the industry are unlikely to be able to be registrable (and, even if you get over the threshold for registratibility, those competitors may oppose the application). Because trade marks are effectively a qualified monopoly right, and can potentially last forever, registries tend to be cautious in accepting trade marks which can potentially be used to prevent lawful uses and stifle creativity. It may therefore take some effort to convince the registry that a visual of a gameplay mechanic is sufficiently distinctive.

It also remains to be seen how trade marks like this will be treated when they are used in anger - i.e. in takedown notices to platforms and app stores, cease and desist letters, and ultimately legal proceedings. Until a few test-cases have been established we will not know for sure, but it is safe to assume that the first few takedown notices based on a multimedia mark of this sort are going to cause some head scratching and internal emails to decide how they should be dealt with.

Despite the outstanding uncertainties, with appropriate tweaking of the mark and specification, and some supporting evidence, in principle there is no reason why a multimedia trade mark for a visual representation of a gameplay element should not be granted.

Because of the relatively modest investment which it represents, we can expect to see a lot more applications for marks like this in the future, as rights-holders will be keen to take advantage of the increased flexibility of the EU trade mark regime.

Kostyantyn Lobov is a Senior Associate at London-based law firm Harbottle & Lewis, specialising in IP and Advertising issues. He is an avid gamer (when life allows it) and sometimes tweets games-related things on @IPLawyerKostya.