Copyright and Trademarking

I had a question for the community, and maybe @lexAquillia would know.

At what point should a company working on a game copyright, and/or trademark their game? What options are their regarding copyright, trademark, etc?

Thanks in advance :)

Comments

  • You own the copyright in your game as soon as you create it. No registration required, no nothing. As soon as you have given your idea material form the copyright subsists with you the author. Importantly through copyright doesn't protect idea, only the expression of ideas.

    Trade Marks a different kettle of fish all together. Essentially you get to forms of trade mark;

    a) common law (tm), and
    b) registered (r).

    Trade marks are used to protect brand names, logos, slogans, symbols, phrases or actual words. It needs to be tied specifically and identify your brand, and is only valid for certain industries (or what is called "classes"). So for example Nike owns the trade mark to the word "nike" but also the nike "tick" in the footwear and apparel class. Trade marks are regional. So your South African trade mark is only good in SA. But what the difference between a tm and a (r) ?

    Well tm's can be asserted by anybody and without registration, just place it next the thing you want to "trade mark". If you think someone is abusing your mark, you can sue them, but you will have the onus to prove that the public associates your mark with you. Registered trade marks alleviate this burden as it will shift the onus onto the other party (basically you say, look he is using my trade mark, and here is the certificate to prove that it is mine). If you want to register the trade mark you will need to file it with CIPC. The entire process takes about 5 years and will cost about R10,000.00. This is for a single mark in a single class. Costs go up if you want to register more marks (so a name and a logo for example) and for more classes. Also remember this is only for South Africa. Your mark is more or less meaningless outside of SA.

    So when do you decide to register the mark? When you have the budget to defend it, and when the mark you want registered is worth defending. One of the responsibilities put on you as the owner of the registered trade mark is that you need to be seen to be defending it, this means getting lawyers involved to send angry letters to people who could be seen as "leaning"|on or trying to exploit your brand. You'd be surprised at how few corporates actually rely on registered marks.

    Here's a game for you: Go and examine branded products, even the big ones and see how many, and what is a registered mark, and which is common law.
  • We need a separate "FAQ: Law and Business" page that just links to all of these sorts of posts by @LexAquillia
    Thanked by 3Fengol GlitchM AntiVoid
  • @LexAquillia Not sure if thats a typo?

    5 years to aquire registered trademark seems very long.
    Why would it take this long, and at which stage of the application will be the major hold up?

    R10,000.00 seems over the top!
    Please correct me if I`m wrong, but the costs outlined by them are around R1000.00 per application per class(including the a special (preliminary) search ).
    With perhaps at the most three classes(NICE classifications: 9, 28, 41) for a specific game brand it should around R3000.00 in total.

    http://www.cipc.co.za/TradeMarks_files/TradeMarkFees.pdf outlines costs.

    Just recently started looking at this for myself, so any feedback on my comments would be highly appreciated.
    Maybe I`m just missing something here??
  • Thanks for taking the time to share this knowledge @LexAquillia - very interesting stuff!
  • Yeah, it's definitely not R10000 bucks. Perhaps he's talking about total costs over the trade marks lifetime, like acceptance, publication, renewal once registered, oppositions, official actions etc.

    An initial filing will cost about R2000 - R3000 if you choose to do it through a reputable law firm. The advantage of this is that they handle all the above mentioned actions and you are assured that your trade mark is filed in the correct class (classification of in which capacity it is protected). It's worth noting that you pay per class when doing a filing, so the more areas you want to protect the more it will cost.

    Adams & Adams is a major IP law firm in South Africa so contact them if you want to go that route.
  • @Oneil_CT whoops, 3 years is right (though I have had an application take 5 years), at least in my experience of having them registered. Once your trade mark is filed the Registrar will need to examine it, this process can take 6 months to a year, and sometimes even longer. Once the registrar is happy, and hasn't notified you of any exceptions, they will give you notice that the mark application is ready for publication. From the date of them notifying you, it will take a further six months to a year for it to be actually published. Once it is published in the Patent Gazette it needs to sit with the registrar for 3 months, this period can be extended by a further three months (and usually is) allowing people to object to the mark, if this happens then the process can be extended by a further two to three years to sort out the objections.

    @WilliamHK, R10,000 would include doing a registrability search as well as following up, the actual registration is cheap (as are the fixed fees), but the attorneys time isn't. If the over all bill for a Trade mark filing with Adams and Adams would be less than R10k I'd be very surprised.

    You can register yourself though, and all it costs is R590 per mark per category. You can file yourself through the CIPC website.
  • edited
    Thanks @WilliamHK and @LexAquillia.

    One thing seems evident, regardless of common law or registered, is the requirement for a prelimanary special search.
    If your proposed desired trademark is already taken, the Registered application will fail, and the applied Common Law Trademark would only invite an infringement against you.

    I will further add to this post, as I continue to try register a trademark on my own.

    Any other tips by fellow makegamesSA members would be most welcome...
  • @Oneil_CT: Oh? Why are you registering a trademark, if you don't mind explaining it? I'm under the impression that for most situations, a trademark is too much effort to be valuable for a game company.
  • @dislekcia I would agree, too much effort in most cases....including the majority of games that I am currently working on.

    However, for me, and perhaps other Indies, the need is justified for just one particular game.

    The 'game concept, and essentially the brand' in question could easily be adapted to suit other media.
    It is not my intention, at this point, to explore those 'other' media avenues, but rather protect myself against other people (large opportunistic corporations) exploiting the 'brand and concept' that this game naturally lends itself to.

    To your last point, of the value to the company, really depends on the success or failure, of the game.
    In my case, the value is in both, whereby failure in one medium, may very well justify an effort in 'porting' to other media formats.

    Lastly, my limited abilities of seeing into the future, prohibts me form making the assumption of success,
    although I wouldnt waste my time, money and effort, if I assumed, it would fail either.
    Registering a trademark takes a long time to secure and waiting for the success of the game, may well be too late to initiate the process.

    Something not really covered here so far, is the reasons WHY one would need a trademark.
    Could you elborate further, on other instances, that do justify the effort of trademarking?
    What where the main motivations for @LexAquillia persuing a trademark on one of his games?

    Further to this thread, is the process of expanding a registered trademark in SA, to other countries.
    Anyone with some experience with this?
    Any other tips, advice, or gotchas that other Indies should be aware of?
  • @Oneil_CT Oh I've never trade marked something for my self, I am an IP lawyer though and have registered many marks for my clients.

    My normal recommendation to a client is to only register a trade mark for something once you've actually got something worth protecting. Remember your trade mark is only as good as your legal budget to defend it. So take your mark you are in the process of registering, say someone does use a similar mark or tries to rip it off. Your registered mark doesn't actually protect you from that happening, it just makes your litigation easier if you decide to sue them. You will still need to spend the money and time on litigating though, and even though your chances of winning are better because you've got the mark you won't be able to recoup all your costs.

    As for expanding your mark in other jursidictions you'll need to file an application for international registration in a country that is a signatory to the Madrid Protocol (South Africa isn't, UK is a popular choice though). Remember the Madrid Protocol only works in countries that have also signed the treaty (around 170 states).

    Also remember that trade marks don't protect "ideas" or "systems" so you can't rely on it to protect you against people making games that are similar in design or play style
    Thanked by 2francoisvn dammit
  • edited
    Thanks @LexAquillia, @dislekcia, @WilliamHK.

    After much research, I have conceded to the fact, that, if one is to pursue a registered trademark for your game or company, it is probably best to get proper legal assistance. Doing this would mitigate any potential issues and or costs that is within their field of expertise. Saving you time and money in the long run....giving you more time to focus on your business/game.

    Are there any good law firms in SA that specialize in IP for indies?
    Are there any 'all-inclusive' or 'fixed-price' type packages?
  • @Oneil_CT: Yeah, there's a lawyer that specialises in IP for indies, you've been talking to him this whole thread :)

    Points at @LexAquilia.
  • @Oneil_CT DM or mail me at nicholas at michalsons dot co dot za. You can check out my firm here: www.michalsons.co.za
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