Trademarks, Patents and Legal Protection For Toys & Games – Practical, Commercial Insights
LEGAL DISCLAIMER: This article should in no way be taken as offering legal advice, neither the author (writing on a work for hire basis) nor the publisher intend or are even qualified to offer legal advice. We highly recommend anyone needing advice in this area to seek qualified, legal expert help. This article is intended to offer practical and commercial perspectives on how product creators can protect their work. Furthermore, not every area of legal protection mentioned in this article can be applied to every country, the law obviously varies from country to country – so take local expert legal advice where required. In short, you wouldn’t go to an automotive mechanic to fix you teeth would you – so please do more diligence on this topic than just reading this quick summary commentary! (Don’t you just love an article which starts with a full paragraph legal disclaimer!).
Anyone who has worked in the toy business for a while encounters some kind of IP (intellectual property) infringement or ‘me too’ product. It can be challenging to take effective steps in such circumstances. So, we’ll take a look at some of the standard legal protections you have available to you & discuss the practicality of these. Then we’ll look at more commercial/pragmatic solutions outside the remedies of the law.
Brands are a big thing in the toy & game business. Brands get sold for big money e.g. Mega Bloks $500m+ usd, Hit Entertainment’s portfolio of brands including Thomas the Tank Engine for $680m usd, Marvel Entertainment $4billion and of course Lucasfilm, owner of the Star Wars brand for $4billion.
What trademarks allow you to do in practical terms is to register proprietary ownership of a brand. That can be a text-based trademark i.e. the brand name, or a design trademark, the most obvious and iconic example of which would be the Nike swoosh logo.
If you have a registered trademark and another company launches a product featuring that trademark, then you have clear legal remedy i.e. if you take them to court you have an obvious claim. In reality any kind of legal action carries costs and risk, but a registered trademark gives you strong legal protection if you have the means and wherewithal to defend it.
Different countries or regions have separate trademark registration systems and processes, so it can take some paperwork and cost to register in multiple markets, but for instance, in the UK you can register a trademark for around £200 gbp, which is not a prohibitive amount for most companies.
PASSING OFF Passing off refers to a company trying to ‘pass off’ their products as those of a different brand they don’t own. For example, you may notice that in the toy market there are lots of blocks that look the same shape and look of Lego blocks. It could be argued in a court of law (& most probably has been argued at some point we guess) that these blocks are passing themselves off as Lego. But what these ‘me too’ products don’t do (at least not if they have any sense) is to add the Lego brand name to the products, because that would be both a trademark infringement and a clear example of passing off.
Patents protect technical invention (at least in theory). By outlining a clear technical innovation, the patent applicant can seek to obtain a patent which ensures their ownership and sole control and commercial usage of that innovation. The challenge, as with all things related to the law, is that practically speaking to enforce a patent is immensely costly, and therefore, within the realms of toys & games unlikely to be practically enforced by most companies.
OTHER LEGAL MECHANISMS AND PROTECTIONS
There are some other protections and actions companies can take. The most practical of which is probably a ‘cease and desist’ letter. It should be quite obvious what that letter does, it instructs the alleged infringer to cease and desist their infringing. Practically speaking, in some blatant cases, where it is obvious a company is infringing the legal rights of another company, an aggressively worded cease and desist letter may be enough to stop the infringing. The cease-and-desist letter also pre-notifies the alleged infringer that legal action may be taken if they don’t stop, at which point in time, the alleged infringer could also become liable for damages and paying the legal costs of the other party.
Litigation may at some point become necessary (in which case, for heaven’s sake don’t rely on a free article on the internet, get qualified legal advice!). There are various strategies for approaching this which go way beyond our expertise but be prepared for a lengthy bitter battle which will put a lot of money at risk and take your time away from managing your business.
Sometimes, practically speaking, some degree of imitation in the marketplace is inevitable if you are successful. Sometime the best approach is to keep trying to develop the next big product and staying ahead of the competition.
Our Managing Director, Steve Reece has worked as a toys expert witness and a board games expert witness, for the Royal Courts of Justice in London and the Hong Kong courts. To find out more about this, just click here: https://www.kidsbrandinsight.com/expert-witness-toys-board-games/