Making a move with multimedia marks: new types of trade mark provide greater scope for IP protection

Written on 26 Mar 2019

In many cases, a gamer's primary interaction with a brand will be digitally through an online marketing campaign, through YouTube, or Twitch, or through the game itself. This has led to animation and sound becoming a normal part of the brand experience. Recent changes to UK trade mark law have resulted in the removal of certain requirements, which open the door to the registration of multimedia trade marks, making it easier for brand owners with a digital presence to protect such elements.

Multimedia marks cover trade marks which combine both audio and visual components, for example the Netflix 'opening' trade mark.

Although these new types of marks are now permitted in the UK, successful applications for multimedia marks still need to meet the basic registrability threshold, namely to be:

  1. Clear and precise; and
  2.  Distinctive.

The first point is to ensure that it is clear to the general public looking at the trade mark register what is protected and the second is to ensure that the mark is capable of designating trade origin. In principle, there is no reason why multimedia marks cannot reach this threshold in the same way that traditional static marks do.

It's now possible to protect gameplay mechanics and character animations

Multimedia trade marks have many applications but the most relevant to developers and publishers will be protection for:

  1. Brands represented as animations – Such as Sonic the Hedgehog running across the screen with the SEGA logo appearing in his wake, or possibly the "FINISH HIM" animation used in Mortal Kombat.
  2. Gameplay mechanics / character animations – For example, Scorpion's "Get over here!" move from Mortal Kombat, Dante's 'Rainstorm' move from the Devil May Cry series or the cinematic, x-ray kill cam in the Sniper Elite series (for which a trade mark registration is currently pending).

The first category will likely help bolster protection against look-a-like games which seek to use a similar animation and/or sounds. The second category has been lauded as a possible alternative to copyright protection where difficulties typically arise in relation to proving copying and/or copyright ownership. Although it is true to say a multimedia mark will assist with enforcement, to say that this is a cure for this issue would be an over-simplification.

The challenge for brand owners will be to prove that the animation is distinctive enough in a trade mark sense for gamers to identify that animation as originating from a particular studio. Even then, protection may be narrow. For instance, a generic character model throwing a stick will not be as distinctive as Kratos throwing his mystical axe in God of War. However, the latter, more detailed, example, while being more likely to be registrable as a trade mark, will provide narrower protection.

Finally, the timing of the multimedia application is important. A number of press outlets monitor trade mark registers, which are public records. Any applications which disclose unseen gameplay mechanics should be considered carefully so as not to unintentionally give anything away before the game is released.

Navigating the path to protection

1.    Review your games and digital marketing and consider whether any elements could be protected as multimedia trade marks.

2.    If you identify any elements, consider filing a trade mark application but note the following:

  • Try to keep the animation short. The shorter it is the more likely it will be registrable.
  • You can try to capture an in-game animation or do a bespoke video to isolate the key elements – but make sure it captures the distinctiveness of your mark and doesn't include any unnecessary generic elements.

3.   Keep a library of any historic digital materials to ensure you have evidence of using the animations you are seeking to protect. The usual rules of "use it (and prove it) or lose it" will apply to multimedia trade marks.

4.    Keep a direct line open with your marketing team at all times so you can consider protecting the right elements at the earliest possible opportunity.