As we all look for ways to connect with one another remotely, we turn to online versions of our favourite games. But in the face of new online knock-off games popping up every day, how do popular game companies ensure their IP stays protected, so that they still have a functioning business when this is over?
Traditional Board Games Moving Online
In this extended period where many of us are housebound, board games are a nice reprieve from social isolation. We are able to play games with our friends over drinks and snacks, from the convenience of our own homes.
One of my favourite board games before social isolation began was Codenames, created by Czech Games Edition (CGE). It is a popular game that is distributed internationally in a variety of languages, and it has won a number of awards, including the Mensa Select Award.
So, as you can imagine, when social isolation was recommended, I looked for an online version of Codenames that would still allow me to have fun with friends and family. My initial search engine results for “codenames online” showed the link to the unfortunately named Horsepaste.com, as well as codenames.plus, codenamesgreen.com and KodeNames. All of these appear to be knock-off online versions of the official version, most of which prominently displayed the word “codenames” on their sites.
CGE was slow to adapt to the current need for online games, so they only recently launched an official online version of the game. If they had popped up in my search engine results the first time I went looking, I definitely would have chosen to use their platform.
Loss of Distinctiveness
Section 18(1)(b) of the Trademarks Act says that the registration of a trademark is invalid if it is not distinctive at the time that legal proceedings take place.
Trademarks can lose distinctiveness if they are not policed. If a trademark is associated with more than one product in consumers’ minds, or worse, if a trademark becomes the generic name for a given type of board or card game, then the original trademark owner risks having the registration declared invalid.
The lack of distinctiveness becomes a liability if a third party wants to clear the register to make way for their new, similar trademark. It can also become a problem if the original trademark owner decides to assert their rights, because the mark’s lack of distinctiveness makes it vulnerable to a declaration of invalidity via a counterclaim.
Trademark owners should actively police their trademarks during this time in order to avoid loss of distinctiveness. Owners should be aware that people are looking for things to do online during this period of self-isolation, and that means that opportunists are more likely to create knock-off versions of popular games.
Depreciation of Goodwill
Registered or not, trademark owners should be concerned and potentially take action if other actors are depreciating the goodwill associated with the trademark. Section 22 of the Trademarks Act states that “No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.”
If there are knock-off games that appear to copy a well-known game’s artwork or style contrary to s.27 of the Copyright Act, a game owner may consider enforcing its copyright.
An Ounce of Prevention…
In order to pre-empt knock-offs, board game companies should act quickly to get their games online so that people will use their official site, rather than looking for a close alternative. This may mean licensing a registered trademark to an online game platform that can get the game up and running quickly, or working within the company to share the game online.
While companies may have to offer these online games for free in the short-term, a company’s IP is an important asset to protect in the long term.
Written by Rachel Marcus, IPilogue Contributing Editor. Rachel is going into her third year at Osgoode Hall Law School, and she is also an IP Innovation Clinic Fellow.