Video game developer King, maker of the insanely popular and addictive Candy Crush Saga, has been granted a US trade-mark for the word “Candy”. While previously owning trade-marks over the specific designs and game titles, this is the first common word successfully trade-marked by King. Some are worried registering a common word is an over-extension of intellectual property rights, while King argues this protection is required to combat knockoffs.
To qualify for trade-mark protection in the Unites States, a proposed trade-mark must be sufficiently distinctive to differentiate the source of a good from other sources of goods. Once granted, trade-mark protection grants the owner exclusive use of it, and restrains anyone else from using a confusing trade-mark. The American legal test for likelihood of confusion, as set out in A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., partly depends on the relation between the mark and underlying product, and the similarities in products between the trade-mark and infringing mark. However, the essence of the test is whether a consumer viewing the infringing mark would likely be confused as to what the source of the good is.
This is very similar to the Canadian test for confusion set out in Mattel, Inc v 3894207 Canada Inc, which is whether or not a casual consumer, somewhat in a hurry, would be confused if the two marks indicate the same source.
How Can King Register “Candy”?
Protection of original designs and words generally pose little concern for trade-mark systems. However, the use of generic words like “Candy” divorced of any specific design or font poses some concern that the use of common words will become unduly limited.
Registrability of a trade-mark in the United States (see 15 USC § 1052) partly depends on the connection between the mark and the goods is it used with. As a generic word, King would not be able to register “Candy” in connection with selling actual candy. Generic words are considered too useful in describing the products of their literal meaning to be protected by trade-mark. However common words can be registrable if there is no logical relation between the mark and the product they are used with. This is the case for marks like “Apple”. This is why King was able to register “Candy”, but only for use with two types of products that have no logical relation to “Candy”, video games and clothing.
In Canada, a common word may also be registered as a trade-mark if it has obtained sufficient distinctiveness through use by the registrant, but the exclusivity granted will likely be limited to the industry in which it acquired distinctiveness. If King were to apply for trade-mark protection of “Candy” in Canada, they would have to prove it has obtained sufficient distinctiveness, and even then any protection would be similarly limited as in the United States.
What Did King Gain?
King was granted a trade-mark in the US for the word “Candy“, but only for uses in video games and clothing. King had previously obtained protection for numerous other trade-marks which included the word “Candy”, but the word was always incorporated into a larger title or design as in “Candy Crush“, or “Candy Crush Saga“. Since these previous trade-marks also had a design component, tests for confusion would also have to take into account the stylistic elements as well as the words used. The newly granted “Candy” trade-mark is a pure word mark, imposing no limitations on font, colour, or arrangement. This new mark potentially allows King to limit any use of the word “Candy” in video games and clothing. Previously, King would only be able to stop competitors and knockoffs who named their products and designed their logos in a sufficiently similar manner to King’s that would cause confusion. Now, King can use their registration to oppose new registrations attempting to use the word “Candy” and the test for confusion in any related litigation becomes that much easier for King to prove.
King’s chief concern at this point seems to be the knockoff games appearing in various “app” stores looking to bait consumers by including popular key words in their titles and ride on the coattails of King’s success. This is precisely what the policy behind trade-mark law is intended to eliminate – consumer confusion about the source and quality of goods, and anti-competitive actions by rival companies abusing the goodwill generated by others. There have been many accusations of knockoff games across the Apple app store and Google Marketplace, and there have been moves to crack down on perceived knockoff apps by the companies in charge of these markets. An additional trade-mark will give King another tool to use against perceived free-riders.
Why Are People Worried?
The two key concerns by critics are the perceived immediate effects and long term implications of such a registration. The short-term concerns related to granting King a registration for “Candy” is their new-found ability to limit the use of this regular, every-day word by others. While King’s ability to limit its use might hinge on whether the word is being used in the areas of video games or clothing, there is still a concern that it could be abused. Some fear that the practice of aggressive enforcement of patent and copyright protections could spill over into the field of trade-marks, leading to “trade-mark trolls” looking to exploit them. In my opinion, this eventuality seems unlikely as a fundamental difference between trade-mark and the other areas of intellectual property is that the trade-mark protection regime operates as a “use-it-or-lose-it” system. This limitation reduces the likelihood of non-practicing entities accumulating marks for the purpose of suing for infringement or for requesting licensing fees.
Some are also worried about what King’s mark means in the long-term; to what extent will we be seeing further registrations of individual, ordinary words without a design element? From a policy perspective, is it wise for intellectual property offices to grant registrations for everyday and dictionary words even if they have acquired some distinctiveness through use? Does King’s mark provide too much protection at the expense of limiting the market? Given King’s success in obtaining a trade-mark for “Candy”, it may be likely that other similar trade-mark registrations could be on their way. While this is not the first time that registrations for everyday words have been granted, there is something about this registration that leaves a bittersweet taste.
Alex Buonassisi is an IPilogue Editor and a JD Candidate at the University of British Columbia.