Computer games company safeguards brand for clothing merchandise

CASE STUDY
Computer games company
safeguards brand for clothing
merchandise
James Cornish, Chartered Trade
Mark Attorney at Page White and
Farrer, recently helped a US
computer games retailer to prevent
another business from registering
one of its brands for clothing
merchandise.
The UK computer games industry is worth
£3.9 billion and around 55 per cent of the
UK population enjoys games. An
increasingly important part of the business
is the associated merchandising that can be
sold because of the fame of the games. This
includes items such as toys and clothing.
players’ characters hunt for bottle caps,
trucks and vending machines. These have a
distinctive name, and although the game
had gone from strength to strength, the
company had not yet obtained any
registered brand protection for the feature
in the context of clothing.
It came to the attention of the computer
games company that an application for a
trade mark had been received by the UK
Intellectual Property Office for the name
used in the successful game. This
unauthorised application had been made by
a retailer of our client’s video games.
Our client is a leading producer of computer
games and one of its well-known games
concerns a post-apocalyptic world in which
Tel +44(0)20 7831 7929
www.pagewhite.com
How we helped
The trade mark team at Page White and Farrer was
asked to oppose the application, and we successfully
proved that our client had a substantial reputation and
fame in the particular game and the brand names used
in the context of the video game. We were also able to
show that this was not limited to the US.
The video retailer strenuously denied that he had ever
played the game and denied any knowledge of its
features. He had later moved into the business of
‘mash ups’ on t-shirts and claimed his adoption and
protection of the words on clothing was a coincidence.
Given the distinctiveness of the wording, his
involvement in the industry and the fame of the game,
the hearing officer considered this to be “wholly
unconvincing. In fact, it is clearly beyond the realms of
even extreme possibility”.
Even though there was no evidence of actual sales of
clothing in the UK by our client, the hearing officer
declared that there was a case of misrepresentation.
There was an intention to deceive, especially given the
applicant’s involvement in the gaming industry, his filing
of other third party signs and his incredible explanation
of how he chose the brand. A case of passing off was
successfully established.
The hearing officer also declared that the mark had
been applied for in bad faith, especially as the video
retailer then adopted the defence that he intended to
use any registration as a shield against further attacks
by our client.
All in a day’s work…
One memorable moment for the trade mark attorneys
on the case was when it was alleged that the director of
the video retailer had telephoned the US attorney for
our client and said that he would come up there and
“cut his balls off”. The director denied this and said that
in fact he said he would “personally feed him his own
balls”. The UK Intellectual Property Office was not
impressed by this defence.
This briefing is for general information purposes only and should not be used as a
substitute for legal advice relating to your particular circumstances. Please note
that the law may have changed since the day this was first published in April 2017.
Tel +44(0)20 7831 7929
www.pagewhite.com
James Cornish
Partner, Head of
Trade Marks
+44 (0)20 7831 7929
[email protected]
Bedford House
John Street
London WC1N 2BF
www.pagewhite.com