Fight against video game cloning – is it possible?

The video game industry has become one of the most successful and attractive recently.

All of this means that game developers start to consider this as a business model with all positive and negative aspects. One of the key moments when it comes to doing business is the return on investments. This means to earn more than you need to invest in your business in order for it to be viable.

From that perspective protecting video games against all sorts of infringements is absolutely crucial for every game developer. And although such protection is possible in case of direct and clear infringements, things can become much more difficult when it comes to game cloning.

Ewa Nagy (Wardyński & Partners) wrote one interesting article for Lexology on that topic. You can find it here.

According to the article:

Cloning in the game development industry means creating video games similar to games that have already gained popularity in the market. But clones are not exact copies of their originals. Therefore, it is hard to accuse them of plagiarism, which would be an obvious infringement of the copyright to the original game. Clones deliberately avoid imitating the original 1:1 but take over selected elements of the original.

Ewa discussed the way how developers can fight against such bad-faith practices. One of the ways is using copyright law. However, this is not possible all of the time because copyright protects the end work not the idea behind it. Everyone can use the same idea expressing it in a different way. The only chance for game developers in this case is when the cloning game can be perceived as a derivative work of the original game. This means that the original game can be recognized in the clone one.

Another way is to rely on industrial design, where you can register different visual elements of a game as industrial designs. To do this, however, these elements have to be new and original.

Game developers can rely on the law against unfair competition or passing off in some countries. This means that if someone tries to imitate a game in order to profit based on another game developer efforts and investments, in this case, a lawsuit can be initiated in order for such practice to be banned by the court.

In addition to this, I would add some other layers of protection that can be sought.

For example, trademark protection for some of the game’s elements. Game developers can protect the main characters from the game as figurative trademarks. This can be a powerful tool because trademarks protection covers not only identical signs but similar too, that is to say if someone tries to imitate the character a registered trademark can be of help.

It is a good approach the game title to be registered as trademarks for the same reason.

In addition to that the game’s title has to be registered as domain names, what’s more, some variations of the domain name have to be registered in order to limit the available options for registration of similar domains by competitors.

In conclusion, I would say that video game production requires a good intellectual property strategy early on in order for the investments to be protected as much as possible.

Lego opposed successfully the LEGNOLAND EU trademark application

The EUIPO Board of Appeal has ruled in a case where the following EU trademark application was filed in class 28 – games, playthings, and decorations for Christmas trees:

Against this mark an opposition was filed by Lego based on earlier trademarks LEGO and LEGOLAND in class 28.

The EUIPO refused the application. The Applicant appealed stating that there was no similarity because of the fact that the first part of their mark consists of the word LEGNO which means WOOD in Italian. This in turn creates meaning of toys made out of wood. Due to this conceptual difference with the earlier signs there was no possibility for consumer confusion.

The Board of Appeal disagreed. The fact that the word Legno has a meaning in Italian was not enough to overcome the similarity. The reason is that most of the consumers in the EU would not understand that word at all.

From visual and phonetic point of view the signs are similar for identical and similar goods. What’s more, both earlier marks have proved reputation in the EU market for many years.

From that perspective LEGNOLAND can be confusingly similar to LEGO and mostly to LEGOLAND.

This case is very indicative that you cannot rely always on the fact that your brand name has a meaning in one language for the purpose of differentiation with other marks, especially in the case of EU trademarks. Sometimes this is not enough particularly in the case of well-known and famous trademarks.