It has been reported that online gamemakers have mounted a protest against King.com after it trademarked the word 'Candy' in Europe in a bid to protect the brand of it’s best selling game ‘Candy Crush Saga’.
Commercial Solicitor Sarah Sillar says, "The gamemakers involved in this action are now producing lots of different games which use the name ‘candy’ in their title in a bid to frustrate King.com’s efforts. However, their actions could leave the gamemakers at the receiving end of litigation themselves."
In order to be protectable as a trade mark the name ‘Candy’ will have been analysed by the UK intellectual Property Office, they will have checked that the name meets the criteria for registration. It must meet the following criteria:
- The mark is distinctive
- The mark must be capable of graphical representation.
In addition the UK Intellectual Property Office will refuse to register any mark if it consists exclusively of signs or indications which may designate the kind, quality, quantity or other characteristics of the goods or services. Or which have become customary in the current language or in trade practices. Or if it is confusingly similar to any other registered trade mark which has been registered for use on similar goods and services.
Once a trade mark has been registered any use by another person of that mark could result in infringement proceedings being brought.
The remedies available to King.com, if successful in a trade mark infringement action include:
- Injunctions
- Damages or an account of profits for the period after the trade mark proprietor applied for the mark
- Orders for erasure, removal or obliteration of offending signs from infringing goods, materials or articles
- Orders for delivery up and destruction of infringing goods, materials or articles.
They are also likely to seek recovery of their legal expenses in pursuing the infringer.
A less risky course of action for the gamemakers would have been to oppose the trade mark at its application stage. Oppositions are similar in some respects to court proceedings: they begin with the parties stating their positions, followed by the service of evidence to support the stated positions, and then a hearing. The opponent sets out why he objects to the application in notice of opposition and statement of grounds; the applicant replies by filing a defence and counter-statement. Each party will then have the opportunity to file one or more rounds of evidence. The most frequently used grounds of opposition are the relative grounds, that is, where the opponent claims that the mark applied for is the same as or too close to his own mark.
We have offices in the Christchurch, New Milton and the New Forest. Our Commercial team also cover Bournemouth and Poole. If you are considering protecting your brand, a trade mark is a great starting point. For a free initial chat, please call 01202 499255 and Sarah or a member of the team will be happy to discuss any questions that you may have.