In Short
- Trade mark protection helps gaming companies safeguard their brand, including game titles, logos, and slogans, from unauthorised use.
- Australian trade marks only provide domestic protection, so you must register in other countries if you plan to expand globally.
- The Madrid Protocol is a cost-effective way to secure international trade mark protection but has a five-year dependency period.
Tips for Businesses
Registering your game title as a trade mark early can prevent others from taking advantage of your brand. If you are expanding internationally, consider using the Madrid Protocol to streamline the process. Prioritise key markets first, as trade mark registration can take time. Consulting an intellectual property lawyer can help you avoid costly mistakes.
Protecting your brand is essential for any business, particularly in the gaming industry, where branding is a significant factor in marketing and consumer recognition. While a gaming company’s studio or publisher name holds value, the most recognisable asset is often the name of its video game or gaming product. Securing trade mark protection for these assets ensures that others cannot take advantage of the goodwill and reputation built through marketing efforts.
Your video game’s name is a trade mark, whether registered or unregistered. However, protecting it can be complex. This article explains key considerations for gaming companies looking to secure trade mark protection.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
How Does Trade Mark Law Work?
Trade mark protections operate on a national basis. This means that an Australian registered trade mark only provides protection within Australia. However, unregistered trade marks may still have some protection through common law claims, such as the tort of passing off.
To gain broader protection, businesses looking to expand internationally must register their trade marks in other jurisdictions.
What Trade Marks Should Gaming Companies Protect?
A trade mark is any sign that distinguishes your goods or services from others. For gaming companies, key trade marks to protect include:
- company name – this identifies the game studio or publisher.
- game title – this is the most consumer-facing element and one of the most valuable assets.
- logos and slogans – these reinforce brand identity and recognition.
Since a game’s title often carries the most weight with consumers, securing trade mark protection for game names is crucial.
Continue reading this article below the formHow Can You Obtain International Trade Mark Protection?
Since Australian trade marks only apply domestically, businesses must seek registration in other jurisdictions. There are two primary ways to do this:
| Filing Directly in Each Country: | You apply separately through each country’s intellectual property office.This can be costly and time-consuming, as it often requires engaging local legal representatives. |
| Using the Madrid Protocol | The Madrid Protocol is an international system that allows businesses to apply for trade marks in multiple countries with a single application.It is managed by the World Intellectual Property Organization (WIPO). |
Using the Madrid Protocol
To apply under the Madrid Protocol, you must:
- have an existing trade mark registration or application in a Madrid Protocol member country (such as Australia); and
- ensure that the country where you want protection is also a Madrid Protocol member.
Most countries are part of the Madrid Protocol, making this a more efficient and cost-effective international trade mark protection method. Instead of filing separate applications in each jurisdiction, you can use your Australian trade mark as a base application. WIPO will then distribute this to the designated countries.
Advantages of the Madrid Protocol
Some advantages of this method include:
- cost savings – filing one international application can be cheaper than multiple separate applications;
- simplified process – no need to engage legal representatives in every jurisdiction upfront; and
- flexibility – additional countries can be added later as your business expands.
However, there is a five-year dependency period. If your base application is cancelled or affected in Australia within this period, your international registrations may also be impacted.
Which Markets Should You Prioritise?
Given the costs and complexities of trade mark applications, applying in every country at once is often impractical. Instead, gaming companies should prioritise trade mark protection in:
- primary markets – where the majority of your players or customers are based; and
- emerging markets – countries where you plan to expand in the near future.
Additionally, the time it takes to register a trade mark varies by country. For example:
- United States – typically 12 to 18 months, assuming no objections; and
- Canada – can take several years before examination.
The Madrid Protocol allows businesses to add jurisdictions to an existing international registration over time, providing flexibility for future expansion.
Key Takeaways
Trade mark protection is essential for safeguarding your gaming brand’s reputation and commercial value. Since Australian trade marks only provide protection within Australia, you will need to take steps to register your mark in key international markets if you’re aiming for global recognition. The Madrid Protocol can offer a streamlined and cost-effective way to secure international trade mark protection, but you should be aware of its five-year dependency period.
If you need help registering your trade mark, our experienced IP lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
Does an Australian trade mark protect my brand internationally?
No, an Australian trade mark only provides protection within Australia. To secure international trade mark rights, you need to apply for trade mark registration in other countries.
How can I protect my gaming brand internationally?
You can protect your trade mark internationally by either filing separate applications in each country where you need protection or using the Madrid Protocol. This allows businesses to apply for trade marks in multiple countries with a single application.
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