Sony lost a GT trademark race in the EU

The European Court has ruled in the case T‑463/20, Sony Interactive Entertainment Europe Ltd v Wai Leong Wong, which focuses our attention on the role of stylized elements in the process of trademarks comparison.

In 2017, Mr. Wai Leong Wong file an application for EU trademark GT RACING for class 18: ‘Leather and imitations of leather and goods made of these materials (not included in other classes) namely leather bags, cases, holdalls, rucksacks, wallets, purses, luggage and suitcases; bags; sports bags; trunks and travelling bags; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, business card cases; tote bags, bottle bags, record bags, book bags; handbags; shopping bags; cases, luggage and suitcases, weekend bags; briefcases; umbrellas and walking sticks; golf umbrellas; parts, fittings and accessories for all the aforesaid goods’.

Against this application, SONY filed an opposition based on the following earlier rights:

• A figurative EU mark No 820738 for classes 9, 16, 28:

• A word EU mark for GRAN TURISMO NETWORK, No 2261873 for classes 9, 16, 28, 41 и 42

• A combined EU mark No 12340981 for classes 9, 16, 28 и 41:

• A combined EU mark  No 12341061 for classes 9, 16, 28 и 41:

• Unregistered EU trademarks for the above signs used in ralation to different goods and services for video gaming.

According to the EUIPO the cited earlier trademarks are not similar to the mark applied for. Most of the word parts in these trademarks are completely different. When it comes to the element GT, the Office considered that it is not similar to the figurative trademark No 820738 because there is no phonetic, visual, and conceptual similarity.

The reason for this conclusion is that the earlier mark is stylized in such a way that requires from consumers a serious imagination in order to discover the letters GT. Most likely most consumers will recognize this sign only as an abstract and unitary shape

The European Court upheld this decision in its entirety.

Sony lost a dispute for its EU trademark VITA

The General Court of the European Union has ruled in case T‑561/20 Sony Interactive Entertainment Europe Ltd v Vieta Audio, SA. The case concerns the issue with proving trademark use in procedures for revocation.

Sony is an owner of a European word trademark VITA for class 9 – “data carriers containing programs” and “audio and/or image carriers (not of paper).”

Against this mark a revocation request was filed in 2011 based on lack of a real market use. Sony submitted different evidence which showed that the mark was used for video game consoles PlayStation Vita.

The key moment in this dispute was whether video game consoles are “data carriers containing programs” and “audio and/or image carriers (not of paper).”

According to the EUIPO and the General Court this is not the case. The reason is that consumer assessment how and for what the mark is used is crucial. From all submitted evidence and from consumer perspective, the trademark was used for video game devices.

Although these devices technically can fit in the description of “data carriers containing programs” and “audio and/or image carriers (not of paper), practically this is not correct because the main purpose of game consoles are not to store data but to allows playing video games. These consoles are part from class 28 from the Nice classification, not class 9.

The fact that Vita was a trademark with reputation cannot be an obstacle for the revocation because even repute mark has to be used for the goods mentioned in its application.

All in all this case comes to show how important is the correct identification of goods and services for the purpose of trademark filing. What is included in the trademark application defines the scope of protection and based on this scope the mark has to be proved in case of revocation.

Source: Kluwer Trademark Blog

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.

Brief IP news

1. Does shiny black and coloured foil count? General Court partially annuls three decisions on the comparison of 3D Champagne bottle marks. For more information here.

2.  Copyright and game jams, hackathons and competitions. For more information here.

3.  IP protection strategies for AI: keep them secret or go for the patent? March 02, 2021. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here.

 

A fight for Call of Duty: Modern Warfare’s “Mara” character

The photographer and writer Clayton Haugen has initiated a copyright lawsuit against the video maker Activision Blizzard.

The case and hand concerns the video game Call of Duty: Modern Warfare. According to Clayton Haugen one of the characters part of the game “Mara” is copied from a character called Cade Janus created by him.

In 2017, Haugen hired a model and took photos for the action character Cade Janus. Later on, Activisation hired the same model for a photo session for the game using similar makeup, style and clothes.

According to the photographer in that way the company copied his own character. Evidence for this was the fact that both the model and the makeup professional were required to sign non-disclosure agreements, which he believes was an attempt the video maker to conceal the copyright infringement, that is to say the they use elements and inspiration from the Cade Janus.

Clayton Haugen registered his photographs that cover his character in the US Copyright Office.

The dispute arise some interesting questions. For example, is using similar makeup, style and clothes can constitute copyright infringement of photographers that are taken by different photographers. In addition, to what extent there is a copyright infringement over the character itself.

Source: WIPR.

Manchester United initiated lawsuits against “Football Manager” video game producers

One of the most famous football clubs in the world the UK Manchester United initiated lawsuits against SI and SEGA which are producers of the video game Football Manager.

The reason for this action was the fact that this video game includes the name of the club and a logo in red and white which although not similar to the original club’s emblem associate with it.

According to Manchester United, when consumers see the name of the football club they will recall about the original emblem. In addition, the video game providers allow using of patches through which gamers can use even the original club’s signs.

For the UK club, all of that ruin the opportunity for licensing revenues from the use of its intellectual property.

The lawyers of the SI and SEGA stated that the potential ban for using the club’s name will restrict the right to freedom of expression. What’s more, the club had no right to claim infringement because it had been aware for this use for years without doing anything. This means that Manchester United had acquiesced in the use of its name by the video game producers.

The court decision is expecting.

Source: UDL Intellectual Property – Christopher Banister, за Lexology.

NBA, tattoos, video game avatars and copyright issues

The US District Court for the Southern District of New York has ruled in an interesting lawsuit which regards the question to what extent the likeness of people with tattoos can be used for creation of avatars for video games.

In the case at hand, the likenesses of three NBA players, Eric Bledsoe, LeBron James, and Kenyon Martin, were used for avatars in a basketball video game.

The copyright holder of the tattoos Solid Oak considered this as illegal because there was no a license for the use of the tattoos in the video game.

The court disagreed. The main arguments for this conclusion were:

• Solid Oak acquired the copyrights over the tattoos after they were put on the basketball players not before that.
• According to the US law, de minimis copyright infringements are not actionable. In this case, the tattoos are visible in the game only up to 11% of their real life size. Moreover, in most of the time they are not recognizable.
• According to the court, there were implied non-exclusive licences between the tattoo artists and the three basketball players. With these licenses the players were been given the right to use the tattoos as part of their own likenesses in public places, for commercial purposes etc.
• There were no limitations by the tattoos artist on how the tattoos to be used in the future.

Source: IPKat.