Thursday 13 July 2017
The name game
With China being an increasingly important market for New Zealand game developers, taking steps to protect your name there is more important than ever. You may not think it’s worth the time and money investing in intellectual property protection for your company name, the name of your latest game release, or even your character names. But beware. Trade mark squatters may swoop in and undercut your rights.
A trade mark is a badge of origin – a brand. It can be the name of your company, the name of your game, even the name of a character. In most countries, you can get some protection for your trade mark just through using it. But not in China.
China is a first-to-file country. This means that whoever gets onto the trade mark register first is considered the ‘true owner’ of the trade mark. It doesn’t matter if you have been using your name for a long time (in China or elsewhere). Unless you are the first to file for your name on the China trade mark register, you can lose the right to use it.
The United States car manufacturer, Tesla, found this out at great costs – paying out nearly USD$4 million to get their trade mark back.
Trade mark squatters are clever and sophisticated, and they don’t just target large foreign corporations. Imagine:
You have spent months/years writing the code, developing story lines, creating characters, worlds, and perfecting your game. You’ve settled on the perfect name. It’s all ready to go, so you have an official launch party and release your game. Everything is going perfectly in the New Zealand market. You look offshore, and China is an obvious choice. So you launch there.
Then you receive a cease and desist letter. Someone else owns the trade mark for your game name in China. You do some digging, and find out they filed the trade mark application the day after you launched your game in New Zealand. Now they say you can use your game name if you pay them $100,000.
This is a hypothetical scenario, but it’s not unlikely. Trade mark squatters in China are a big problem for companies wanting to sell there. The squatters often don’t have a product. They are after the money you will be willing to pay to be able to keep using the name of your game in the lucrative Chinese market.
So, what can you do to protect yourself?
The answer is simple – register your trade mark in China before anyone else does.
If you are thinking about tapping into the Chinese market, make sure you talk to a trade mark professional. The cost to file an application is significantly cheaper than paying a trade mark squatter, or the cost of re-branding later.
Your intellectual property protection options aren’t limited to trade mark registrations. China is one of the few countries that lets you register copyright. It’s not strictly necessary, but having a copyright registration makes your life much easier later on. If you can prove you own the copyright in an artistic work (your logo, what a character looks like, the design of weaponry, even the look of your game’s world) then registering copyright in China is a straightforward process. A copyright registration is an effective tool to your ability to enforce your intellectual property in the China market.
So what’s the takeaway message in all this? Think about and look into intellectual property protection in China before you enter the market. A good trade mark can be the single greatest asset to your business, so don’t risk losing the ability to use it in China.