Traditional Board Games Moving Online

In this extended period where many of us are housebound, board games are a nice reprieve from social isolation. We are able to play games with our friends over drinks and snacks, from the convenience of our own homes.

One of my favourite board games before social isolation began was , created by (CGE). It is a popular game that is distributed internationally in a variety of languages, and it has won a number of awards, including the Mensa Select Award.

So, as you can imagine, when social isolation was recommended, I looked for an online version of Codenames that would still allow me to have fun with friends and family. My initial search engine results for “codenames online” showed the link to the unfortunately named , as well as , and . All of these appear to be knock-off online versions of the official version, most of which prominently displayed the word “codenames” on their sites.

CGE was slow to adapt to the current need for online games, so they only recently launched an of the game. If they had popped up in my search engine results the first time I went looking, I definitely would have chosen to use their platform.

Potential Harm

Loss of Distinctiveness

of the Trademarks Act says that the registration of a trademark is invalid if it is not distinctive at the time that legal proceedings take place.

Trademarks can lose distinctiveness if they are not policed. If a trademark is associated with more than one product in consumers’ minds, or worse, if a trademark becomes the generic name for a given type of board or card game, then the original trademark owner risks having the registration declared invalid.

The lack of distinctiveness becomes a liability if a third party wants to clear the register to make way for their new, similar trademark. It can also become a problem if the original trademark owner decides to assert their rights, because the mark’s lack of distinctiveness makes it vulnerable to a declaration of invalidity via a counterclaim.

Trademark owners should actively police their trademarks during this time in order to avoid loss of distinctiveness. Owners should be aware that people are looking for things to do online during this period of self-isolation, and that means that opportunists are more likely to create knock-off versions of popular games.

Depreciation of Goodwill

A lot of popular board and card games, like , , or have registered trademarks in Canada. However, Codenames does not.

Registered or not, trademark owners should be concerned and potentially take action if other actors are depreciating the  goodwill associated with the trademark. Section 22 of the Trademarks Act states that “No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.”

Copyright Infringement

If there are knock-off games that appear to copy a well-known game’s artwork or style contrary to of the Copyright Act, a game owner may consider enforcing its copyright.

An Ounce of Prevention...

In order to pre-empt knock-offs, board game companies should act quickly to get their games online so that people will use their official site, rather than looking for a close alternative. This may mean licensing a registered trademark to an online game platform that can get the game up and running quickly, or working within the company to share the game online.

While companies may have to offer these online games for free in the short-term, a company’s IP is an important asset to protect in the long term.

Written by Rachel Marcus, IPilogue Contributing Editor. Rachel is going into her third year at Osgoode Hall Law School, and she is also an IP Innovation Clinic Fellow.

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Claim for Infringement and Counterclaim

Mattel argued that Zynga's use of the mark was contrary to article 9 of the .��This provision allows exclusive rights to a community mark, and the right to prevent use of a sign that is either : 1) identical  to the registered mark, 2) similar to the registered mark and likely to cause confusion in relation to identical and similar goods, or 3) where use of the mark takes unfair advantage of the distinct character and reputation of the community mark.��Zynga counterclaimed that the SCRAMBLE mark was invalid as it lacked distinctive character, was descriptive and had common usage, and that their mark was therefore non-infringing.

Evidence provided to the court indicated that Mattel was aware of the game for a number of years before launching a claim. At the time of the decision, the game was in its fifth version, and not only was Mattel aware of the game in earlier incarnations, but employees played the game with each other. The court also found it troubling that the claim was launched soon after negotiations regarding a joint venture between Mattel and Zynga broke down. The court concluded that such a delay indicated at worst that the negotiations were not carried out in good faith, and at best, that Mattel did not consider the game worthy of an infringement claim.�� In comparison, the court found that an email detailing Zynga’s concern over the potential confusion between Scrabble and Scramble to be insignificant.

Decision

The Court held that the word “scramble” was the common name for this type of game. As a result, the court agreed that Zynga merely used a wording in the public domain that is descriptive of the game and therefore did not infringe the mark.��The Court concluded that neither “Scramble” nor “Scramble With Friends” infringed the SCRABBLE trade-mark. The Court deemed that mark was not similar and not likely to cause confusion for infringement or passing off. Yet, the Court did qualify this decision on a modification of the logo. The Scramble logo at the time contained an “m” on its side. The Court found that this gave “the impression that the word is scrabble when one looks at it quickly and has the propensity to confuse.” Although Zynga was largely successful they will have to alter their logo to avoid this potential confusion.

Canadian Outcomes

In North America, Hasbro holds the  trade-mark, and Electronic Arts holds the rights to  of the game. In addition, Hasbro entered into an  to create physical versions of games in the Zynga family, similar to the failed agreement in the Mattel claim. These games include a "" version of Monopoly and a "" version of Pictionary that have tie-ins to the online versions of Zynga games.

In a similar case in Canada, , the Canadian Federal Court examined the similarity between Trivial Pursuit and a parodic adult version. In a comparison of the script and packaging, the court found that the defendant’s script was reminiscent of, but not identical to, the plaintiff’s script. The court went on to hold that the design and appearance of the game intended to raise an association with Trivial Pursuit. The court in that case rejected an argument that Trivial Pursuit was descriptive of the type of game, as it did more than merely describe the game. In that case, the court turned its mind to the use of a trade-mark and made it clear that the focus of the action is "use", not the similarities between the games.��In that case, the court did find that the parody infringed the Trivial Pursuit trade-mark.

Due to the agreement between Hasbro and Zynga and the fact that the game is unavailable to Canadian consumers, a similar claim is unlikely to be made in Canada. If a claim was brought in Canada, the claimant would have to show infringement of the SCRABBLE mark itself, rather than rely on the Zynga game’s similarity to Scrabble, or infringement of SCRAMBLE, since that  is owned by Konami.  Even absent this web of ownership, I believe that based on Horn Abbot, a Canadian court would be unlikely to find infringement in this case. To determine whether trade-marks or trade-names are confusing, the court must have regard for the surrounding circumstances including the degree of resemblance between the marks in appearance or sound or the ideas suggested according to  of the Trade-marks Act.��Unlike in Horn Abbot, the marks are not similar in appearance. The UK court noted the use of different words, script and packaging. Furthermore, I think that the addition of “With Friends” to the Zynga game's name identifies Scramble as a member of the Zynga "With Friends" family of marks rather than an attempt to confuse consumers by passing off.

In this case, Scrabble appears to be scrambling for a better result. A Mattel spokesperson has that Mattel was “disappointed that the court did not rule that Zynga should cease using the Scramble name, which Mattel intends to appeal.”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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