When brand development can be a warzone it's vital that every General has a battle plan.
Every day, businesses across the globe invest significant sums of money in building brands and launching products that have shaky foundations. Often, entrepreneurs and business owners are unaware of the risks until they find shots are being fired at them. Large companies are often willing to take on the fight since they have the necessary resources, but for some small businesses with less resources it can be a fight for their life…
Brands are the way a product, company or individual is perceived by those that experience it and are often built around logos, words or phrases. Brands attempt to build familiarity, goodwill and trust, and consumers understand the brands they choose and often become loyal. Think Apple v android, Coca-Cola v Pepsi, McDonalds v Burger King – everyone will have their preference and with a cost of anything from £10,000 - £200,000 to begin to build a brand it is important that not only do you protect your brand against copycats but you need to be confident that the foundations on which your brand is built are made of sturdy stuff.
Gamers and non-gamers alike will be familiar with the Call of Duty video game franchise, and as owners Activision bring their fight from the virtual world into the courtroom, they illustrate how important it is to check you are not infringing another’s IP before releasing a product (or building a brand).
In March 2020 Activision launched Call of Duty: Warzone, a multiplayer first person shooter video game. In June 2020 they filed US trade mark applications for WARZONE and CALL OF DUTY WARZONE giving rise to a trade mark dispute with a company called Warzone.com LLC, the producer of Warzone, a “turn-based online board game” that was launched in 2017.
According to Activision, Warzone.com LLC has made various threats against Activision relating to its’ use of, and trade marks for, the names WARZONE and CALL OF DUTY WARZONE. It is claimed that Warzone.com LLC has demanded that Activision changes the name of the game so that WARZONE is no longer used, withdraws its US trade marks for WARZONE and CALL OF DUTY WARZONE, and is also seeking monetary relief from Activision.
Call of Duty Warzone has been downloaded more than 80 million times, so if they are forced to change the name of the game, it will be a costly blow. This explains the latest development in the dispute with Warzone.com LLC – Activision has filed a counterclaim seeking a decision from the court confirming that (a) Activision is not infringing trade mark rights purported to be owned by Warzone.com LLC; and (b) Activision’s trade marks should not be refused on the basis of a conflict with these purported trade mark rights. In addition, they are seeking monetary relief from Warzone.com LLC, and are attempting to prevent the registration of the trade marks filed by Warzone.com LLC.
There is a long track record of businesses having to rebrand following trade mark infringement complaints by others. For example, in 2007, Donna Dobson opened a shop and named it Zara’s Countrywear after her daughter. This attracted the attention of the fashion giant Zara, who took action forcing Dobson to change the name of her business. Similarly, Liverpool restaurant Albion was forced to rename as Albina after fashion designer Terence Conran applied legal pressure over the use of the word Albion.
Injuries to your business like this are avoidable. Before launching a new brand or extending an existing brand to a new range of products, it is important to conduct trade mark searches to ascertain whether the brand is free for use. In some countries a search of the trade mark register may suffice, but in certain countries the courts can recognise trade mark rights even if a trade mark has not been registered (known as unregistered rights). So, in addition to trade mark register searches, other searches should be conducted to assess whether any third parties are using the same or similar brands in the market since that use could give rise to these unregistered trade mark rights. Once you have determined you are free to use your brand, you should file trade mark applications, since that will make it easier to stop others using, or registering trade marks for, the same or similar brand.
For more information and expert advice get in touch with Liam Peters, Trade Mark Attorney on +44 1242 267600.