Trademarks can be a powerful tool for protecting branding associated with VR/AR technology. In the third of our series, we will briefly look at what you can protect as a registered trademark and the benefits of registration, on the scope of registered protection and on trademark infringement risks relating to VR/AR content.
What is a trademark?
Trademarks act as a badge of origin, identifying goods and services of one business from another. In order to attract registered trademark protection, a ‘sign’ must, amongst other things, be capable of being represented clearly and precisely and of distinguishing goods or services of one undertaking from those of other undertakings.
Advantages of registering a trademark
It is not essential to seek registered trademark protection for your brand, but there are clear advantages in doing so rather than relying on unregistered trademark rights in your brand (i.e. the goodwill in the brand, which would give a cause of action called passing off). A registered trademark:
- is an asset which can be commercially exploited and can help to attract and persuade investors;
- is relatively easy to enforce against infringers compared to unregistered trademark rights; and
- can act as a good deterrent against copycats and free-riders.
Plus, once you have the registration it can potentially be renewed indefinitely.
What can you protect as a registered trademark?
A number of different types of ‘sign’ can be registered as a trademark.
‘Traditional’ types of trademark include signs such as brand names, slogans, and logos. For example, the name Pac-Man and the main character (depicted in logo form) have registered trademark protection.
As technology has progressed, so has the sophistication and scope of trademark protection. ‘Non-traditional’ types of a trademark now include sounds, motions, holograms, gestures, and moving images. This opens up the possibility of finding creative ways to protect different VR/AR mechanics as registered trademarks – provided they can be represented clearly and precisely and are capable of acting as a badge of origin.
A 25-second clip of Sniper Elite’s X-Ray kill-cam feature is an example of an application for a non-traditional trademark (described in the application as a multimedia mark). The mark applied for covers the entire video depicted in the 25-second clip. Whilst this particular application (still in the examination stage) arguably stretches what registered trademarks are there to protect (is the whole 25-second clip really capable of acting as a badge of origin?), the application in and of itself shows the innovative ways that developers are looking to protect different aspects of their overall brand identity. Certainly, there is nothing in principle preventing mechanics such as this from attracting registered trademark protection even if this particular application is unsuccessful.
What is the appropriate scope of trademark protection for your business?
A trademark registration gives the owner exclusive use of the mark (and confusingly similar marks) in relation to the goods and/or services for which it is registered. So it is important to carefully consider how wide to cast your net with your trademark ‘specification’. This is particularly the case for VR/AR technology – a rapidly changing and evolving landscape. Trademark attorneys can advise you on the appropriate scope of protection but, in any event, take note of the following two key issues.
Some VR/AR technologies will have applicability in just about any industry including healthcare, gaming, manufacturing, film and entertainment, and cybersecurity. As such, it may be difficult for you to know early on if your technology may operate in any of these areas in the future, so the temptation may be to go with a wide specification of goods and services across many industries. However, this is not necessarily beneficial to you if, in practice, the technology is most likely to be used in only a select number of areas. The reason being that if the full scope of the specification is not used, the registration could later be challenged on the basis that the registration is not being put to full use.
You need to balance this against the importance of ensuring the specification takes into account how your business and the application of the VR/AR technology may change in the future. This will help to provide protection for the brand later down the line and minimize the need for multiple follow up trademark applications.
Another key consideration is what terms to include in the specification. Being over technical with the terms used can create problems at trademark offices. Whilst terms such as augmented virtuality, open-world exploration, and room-scale may be very familiar to you, they may be less familiar to the trademark examiners who will be reviewing the application. This could slow down the application process or even result in the rejection of the application.
What about using third party branding in the VR/AR space?
Trademark infringement risks in the VR/AR space are similar to more traditional media and platforms. Do not assume that operating in a virtual capacity reduces the risk, particularly if the VR/AR technology is being used for commercial purposes.
Using a third party brand (this includes the image or name of a famous person) may amount to trademark infringement (if there is a registration) and/or passing off in relation to the goodwill in the brand. It will, of course, depend on the circumstances, such as the precise nature and scope of the use. For example, a brand owner may not have particular concerns with, say, fleeting use of the brand on an awning in a generic street scene. However, they may take issue if the brand appears in VR/AR technology for a product, service or industry they do not support, or if the use suggests the brand is behind or endorses the product or service; in this situation, they will be concerned that the goodwill and reputation associated with the brand will suffer damage of some sort.
Therefore, if considering using a third party brand in VR/AR technology, care must be taken. A sensible starting point would be to seek express clearance from the brand owner or consider whether it is possible to come up with a workaround that does not use or make reference to, the brand.
Take home message
Strong brand identity will help set you apart from your competitors. Suitable registered trademark protection (which may cover more than one ‘sign’) will help support, nurture and protect your brand both now and in the future. If you are considering using or referencing third party branding in your XR technology, proceed with caution and bear in mind the points mentioned above.
Vicky Butterworth is an intellectual property lawyer at Marks & Clerk Law with significant experience of advising clients in the VR/AR sector on a full range of contentious and non-contentious IP issues. Examples of her work in this sector include advising on the protection and enforcement of ‘format’ rights, on rights clearance pre-film and TV production, on copyright ownership issues in relation to commissioned content, on IP protection relating to pitches to third parties and on copyright and moral rights issues
Vicky is an intellectual property lawyer with significant experience of advising clients in the VR/AR sector on a full range of contentious and non-contentious IP issues. Examples of her work in this sector include advising on the protection and enforcement of ‘format’ rights, on rights clearance pre film and TV production, on copyright ownership issues in relation to commissioned content, on IP protection relating to pitches to third parties and on copyright and moral rights issues.