How does one go about securing IP protection to protect their business interest in a new board game?
Trade Marks
You might be able to obtain trade mark registration for certain aspects of a board game including:
- the name of the game e.g. Monopoly or Trivial Pursuit
- a phrase or slogan associated with the game
- a logo associated with the game
An advantage of trade mark protection is that registration can last indefinitely. Trade marks are also relatively cheap to obtain compared to some other forms of IP protection and don’t suffer from prior disclosure problems like patents do.
Law of Passing Off
If your trade mark is not registered, you may have rights under the common law action of passing off. Passing off occurs when a party represents their goods and services as the goods or services of someone else.
To be successful in a passing off action you must establish the three elements:
- You must have established a significant reputation in relation to those goods in the country or region
- There must be misrepresentation – it must be likely that consumers are deceived by the way that the competitor has presented the goods.
- Your reputation has been, or is likely to be, damaged by the misrepresentation.
Although passing off actions extend to unregistered trade marks, they must be commenced in a Court and are thus difficult and expensive.
Patents
It is possible to obtain patent protection for a board game. For example, US Patent No. 9,597,581 B2 discloses a board game combining the traditional Asian counting system of tally marks, basic addition skills, vertical and horizontal tracking of tally numeral combinations, and strategic sequential placement of same-colour game tiles. Australian Patent No. 2009200654 describes a board game for improving numeracy.
A board game may be patentable when it has a material advantage / practical utility other than merely allowing the game to be played. As such, it is generally difficult to obtain patent protection for most board games and obtaining a patent should not be a priority in most instances.
Designs
Designs are a good alternative to patents as there is no need for practical utility.
Designs protect the visual appearance of a product viz. namely its shape, configuration, pattern or ornamentation. Designs do not protect the function or operation of a product.
In Australia, enforceable designs are new and distinctive. A design is distinctive unless it is substantially similar in overall impression to an earlier design.
Like trade marks, obtaining design protection is also relatively inexpensive.
Copyright
Copyright protection is free and applies automatically when material is created. Copyright protects literary works including the rules of a game and artistic works which may include a drawing of the board game.
Advantages of copyright protection include its long life (the life of the creator plus up to 70 years) and there is no cost associated with registering your rights.
However, disputes need to be resolved in a Court which, like the law of passing off, can be problematic and costly. Further, copyright only protects the material form of works meaning a third party could avoid infringement by rewriting your game rules in a different form while still capturing the essence or spirit of the way the game is played. Copyright does not protect ideas, concepts, styles, techniques, information, names, titles, and slogans.
Summary
On balance the most appropriate approaches for securing IP protection for board games are:
- apply for trade mark protection for names and logos associated with the board game; and
- apply for design protection if the board game has a new and distinctive appearance.
If you would like to discuss IP protection for board games then do not hesitate to contact Chris Addicott.