The publisher of the popular game Candy Crush Saga recently attracted savage criticism for its attempts to trade mark the word CANDY in the United States.
King.com Limited (King) filed a trade mark application in the United States in February 2013 for the trade mark ‘CANDY’ in classes 9, 25 and 41 for goods and services including computer games, downloadable software, clothing, and various sporting and entertainment type services. King already owns a trade mark registration in the US for ‘Candy Crush’ and ‘Candy Crusher’, and a trade mark registration for CANDY in Europe.
Candy Crush Saga is a video game for Facebook and smartphones. It has more than six million daily active users and is estimated to generate more than $800,000 in revenue per day, making it one of the most popular video games in the world.
Recently, controversy arose after King reportedly sent out cease and desist letters to smaller game developers based on their use of the word ‘candy’. Through various social media sites, game developers criticised King and claimed that it should not be able to trade mark a common word such as CANDY.
After taking issue with one particular app, King hit back at its critics and issued a press release that said:
“We have trademarked the word ‘candy’ in the EU, as our IP is constantly being infringed and we have to enforce our rights and to protect our players from confusion. We don’t enforce against all uses of ‘candy’ – some are legitimate and of course, we would not ask App developers who use the term legitimately to stop doing so.”
To those familiar with trade mark law, the backlash King faced seems a little unfair in the circumstances. The fact that CANDY is a common word will not of itself prevent a registration of the mark. Rather, a trade mark will be refused registration where it describes a characteristic of the goods or services specified in the application. In the parlance of trade mark lawyers, it is a mark that is not inherently adapted to distinguish the goods or services for which registration is sought. Even where a mark is not inherently adapted to distinguish, it may still be registered if the trade mark applicant can establish through use that the mark has acquired distinctiveness and is acting as a badge of origin for the trade mark applicant’s goods or services.
Given its success, it is not surprising that King took steps to protect and enforce its trade marks. However, King abandoned its US application for CANDY after the US Patent and Trade Marks Office accepted it for registration. Perhaps it backed down because it did not want to face further negative publicity or a possible trade mark opposition.
In Australia, an application for CANDY was pending at the time of writing for goods in classes 9, 25 and 41. An adverse report was issued on the basis of a prior registration. In the European Community, King’s registration for CANDY is currently subject to a cancellation action so it may be some time before King’s trade mark battles are over.
This controversy illustrates the issues that can arise in the context of branding tablet and smart phone apps. It also highlights two key questions for those launching an app and choosing a new app name or icon:
- Is the new app name or app icon infringing someone else’s trade mark rights?
- Does the new app name or icon qualify for trade mark protection?
Before a new app is launched, trade mark searches should be undertaken to ensure that the app name and logo are available for use in relation to the goods and services of interest. Even if no registered trade mark is located, new entrants may find themselves facing the common law action of passing off or fall foul of the Australian Consumer Law if use of their mark constitutes a misrepresentation. This might arise in the situation where an icon such as the ‘Candy Slots’ icon referred to above, arguably attempts to trade on the goodwill or reputation in Candy Crush Saga.
If the app name describes the services or products an app relates to, such as ‘The Pet App’ ‘HotelApp’ or ‘PT APP’, then it is unlikely to be capable of trade mark protection unless it can be shown that the trade mark has through use come to distinguish the goods and services of the trade mark owner. In such cases, seeking protection for an app icon rather than its name may be appropriate.