The Indian gaming industry is experiencing an unparalleled outpouring, marked by a three-year compound annual growth rate (CAGR) of 28%. Projected to surpass ₹16,000 crore in market value, the sector has attracted a staggering ₹23,000 crore in investments between FY20-24.[1] By 2025, it is expected to generate approximately 250,000 jobs, thereby becoming a vital contributor to the government’s Startup India vision. Notably, India ranks second globally in online gaming, accounting for 16% of global game downloads in 2023.[2] A significant milestone is the increasing participation of women, who now constitute over 41% of Indian gamers, challenging entrenched stereotypes.[3]
Amid this explosive growth, intellectual property (IP), particularly in the trademark has emerged as a keystone for safeguarding the unique identities of businesses, developers, and players. This article delves into the complexities of trademark protection within the gaming ecosystem, explores notable case studies, and examines how the Trade Marks Act, 1999, offers a vigorous legal framework.
The Role of Trademarks in the Gaming Industry
- Identity
Trademark serves as vital tools for defining a game’s identity. They encompass fundamentals such as game titles, logos, taglines, and distinctive visual or auditory features. These marks enable players to recognize and connect with a game amidst a crowded market. For developers, a strong trademark distinguishes their creations and fosters brand loyalty.
- Legal Exclusivity and Protection
The Trade Marks Act, 1999, grants the proprietor exclusive rights to use the mark in relation to specific goods or services. Section 28 of the Act provides the owner with the legal prerogative to prevent unauthorized use, thereby ensuring brand integrity and market exclusivity. Moreover, Section 29 addresses infringement, enabling developers to initiate legal action against violators who use identical or deceptively similar marks.
- Marketability and Monetization
Trademarks significantly enhance a game’s marketability and value. Registered marks can be monetized through licensing agreements, merchandise, and spin offs, creating additional revenue streams. A well-protected trademark portfolio not only attracts investors but also strengthens a developer’s position in the global marketplace.
Trademark Disputes
The gaming industry’s rapid expansion has given rise to several trademark disputes, often revolving around brand confusion, infringement, and dilution. Key issues include:
- Similar/Identical Game Titles
Disputes frequently arise when new games adopt titles resembling existing popular games, creating confusion among players. For instance, when a new entrant uses a title evocative of an established game, it risks violating Section 11(1) of the Trade Marks Act, which prohibits registration of marks likely to cause public confusion.
- Infringement
Logos and other visual identifiers are integral to a game’s brand identity. Section 9 of the Act disallows registration of marks that lack distinctiveness, further underscoring the importance of unique logos. Disputes occur when visual elements closely mimic those of existing games, leading to market confusion and brand dilution.
- Misuse of Taglines and Catchphrases
Taglines and slogans, often trademarked under the Act, are subject to disputes when similar or identical phrases are used by competitors. Such infringements dilute the distinctiveness of the original mark and erode consumer trust.
- Imitation
Characters, names, and in-game content that are trademarked under the Act face infringement risks when imitated by other developers. Sections 2(zb) and 29 are pivotal in addressing such violations, protecting the unique attributes that form a game’s identity.
- Conflicts
With the dominance of digital distribution, domain name disputes have become prevalent. Cybersquatting, where a third party registers a domain incorporating a trademarked game title, violates Section 29(4) by exploiting the reputation of the mark for undue advantage.
Case Studies in Trademark Disputes
- Sony’s PS5 Trademark Dispute
A prominent example is Sony Interactive Entertainment’s PlayStation 5 (PS5) trademark case. Sony’s trademark application under Classes 9, 28, and 41 faced opposition when an individual, Hitesh Aswani, filed for the PS5 mark under Class 28. Invoking Sections 11(1) and 21, Sony objected on grounds of conflicting trademarks. The dispute concluded when Aswani withdrew his application, affirming Sony’s exclusive rights and highlighting the necessity of proactive trademark strategies.
- Candy Crush Saga vs. Apeejay Surendra Group
King.com, the company behind the popular game Candy Crush Saga, took action against the Apeejay Surendra Group for copyright infringement. The suit arose after King discovered that images from Candy Crush were being used in online advertisements for a live music event at Park Hotel in Visakhapatnam, managed by the Apeejay Surendra Group. Although Park Hotel itself was not directly responsible, the event was organized by Rowthu Projects, a Hyderabad-based company, which later canceled the event. The Bombay High Court issued an ex-parte order on June 12, 2014, recognizing King’s intellectual property rights to Candy Crush and restraining the Apeejay Surendra Group from using the game’s images. Following this, King entered into consent terms with the Apeejay Group, acknowledging Candy Crush as a well-known trademark and sending cease-and-desist notices to Rowthu Projects and other infringing websites to prevent unauthorized use of its intellectual property.
- PUBG vs. Fortnite
In another high-profile case, PUBG Corporation alleged that Epic Games’ Fortnite infringed on its trademarks. While the dispute centered around gameplay mechanics rather than registered marks, it highlighted the complexities of protecting intellectual property in an industry where innovation often overlaps.
Strategies for Robust Trademark Protection
A harmonized approach to trademark protection begins with conducting comprehensive clearance searches to ensure the uniqueness of trademarks, thereby reducing objections under Section 11. Registering marks across multiple classes safeguards not only game titles but also related merchandise, entertainment services, and digital content, ensuring holistic coverage. Regular monitoring of trademark databases and prompt enforcement under Sections 28 and 29 are crucial for preserving brand integrity. Additionally, embracing alternative dispute resolution methods like mediation and arbitration fosters collaborative solutions, streamlining conflict resolution while easing the burden on judicial forums.
In the dynamic gaming industry, trademarks are indispensable for preserving brand identity, preventing infringement, and ensuring long-term success. The Trade Marks Act, 1999, provides a robust legal framework to address the complexities of trademark protection. As developers and businesses navigate this vibrant sector, proactive strategies and vigilant enforcement will remain critical. By fostering a collaborative ecosystem, stakeholders can champion innovation while safeguarding intellectual property, ensuring the gaming industry’s sustained growth and success.
Author(s) Name: Mohit Porwal (VP- Legal & Finance) and Vidhi Agrawal (Associate)
[1]https://www.broadcastandcablesat.co.in/pwc-report-ott-and-online-gaming-drive-em-growth-in-india/#:~:text=With%20the%20inclusion%20of%20real,at%20a%20CAGR%20of%2014.5%25.
[2]https://indianexpress.com/article/technology/gaming/online-gaming-india-employment-downloads-report-9236060/#:~:text=So%20it’s%20no%20surprise%20that,)%20and%20Brazil%20(7.6%25).&text=The%20downloads%20are%20also%20on%20a%20steady%20rise.
[3]https://www.thehindu.com/news/national/telangana/women-command-41-share-in-indias-gaming-arena-survey/article67489936.ece#:~:text=Breaking%20the%20stereotype%20of%20online,ratio%20of%20roughly%2060:40.
