First-person shooter video games, such as Call of Duty or Counter-Strike, often depict what appear to be real-life firearms. Following past US debates that have drawn links between gun violence and video games, many video game developers have sought to distance themselves from firearm manufacturers, including by generally refusing to enter licensing deals to pay for the right to use branded weapons in their games for at least the past ten years. To reduce trade mark infringement risks when including real-life weapons, developers have often invented fake brand names for the replica weapons in their games, debranded the weapons or have subtly modified the appearance of virtual versions of real-life weapons.
Given the explosive growth of the video games industry and concerns over protecting value in the virtual world, brand owners, including firearm manufactures, have sought design and trade mark protection for their real-life products to restrict game makers from including them in virtual worlds without agreeing licensing terms. The EUIPO’s recent decision to reject an application to register the appearance of a firearm as a trade mark on the basis that it lacked distinctive character suggests that firearm manufacturers may need to look beyond trade mark law to control virtual depictions of their weapons, such as to registered designs or even copyright (following the Cofamel decision); albeit in-game use of real gun names and logos are likely to be higher risk for game developers and publishers.
In February 2022, Colt CZ Group SE (“Colt”) applied to register the following figurative mark (the “Mark”) as a European trade mark:
The registration was sought in the following 3 classes:
- Class 9: Virtual downloadable goods namely apparatus for recording, transferring, reproducing sound or image, computer programs targeting virtual firearms and accessories for online and online virtual worlds.
- Class 35: Online shop services dedicated to virtual goods, namely virtual firearms.
- Class 41: Entertainment, sporting and cultural services providing online virtual firearms for virtual use
In December 2022, the Examiner rejected the application on the grounds that the Mark lacked the intrinsic distinctive character required under Article 7(1)(b). In summary, the grounds were:
- The Mark is an image of how a (virtual) firearm is generally represented and consumers would perceive it as such. Therefore, it cannot constitute a badge of origin.
- Due to the virtual world’s increasing popularity, virtual firearms would be used by persons without detailed knowledge of firearms and therefore the level of attention of the relevant consumer is average to high level.
- The assessment of distinctive character is not influenced by the relevant public being partly specialised.
Colt appealed the decision on the following grounds:
- The Mark is an image of Colt’s assault rifle ‘CZ BREN 2’, which has a complex shape that deviates significantly from the normal representation of a firearm. This would be discerned by consumers with even little knowledge of weapons.
- The Mark has an overall unique appearance which will be obvious to the relevant consumer (incorrectly defined by the Examiner). It also features the word ‘CZ BREN 2’.
- The goods and services in question are not as widely accessible as suggested. The relevant public should therefore be narrowed to those interested in firearms or virtual firearms.
- The shape of the ‘CZ BREN 2’ has been registered as a Community Design. This in itself is indicative of its distinctiveness.
Article 7(1)(b) of the EU Trade Mark Regulation 2017/0001 requires that a mark must serve to identify the goods or services for which registration is sought as originating from a particular undertaking and thus distinguishing the goods or services from those of other undertakings.
Distinctive Character is therefore assessed 1) in light of the goods and services applied for; and 2) in the perception of the relevant public.
Distinctiveness in light of Goods and Services
The Board considered the following two grounds of Colt’s appeal: 1) the verbal element (the word ‘CZ BREN 2’; 2) the visual element (the representation is not of a common/ ordinary weapon)
1. The verbal element
Whilst it is usually sufficient for a non-distinctive sign that contains distinctive verbal and/or figurative elements to be considered distinctive as a whole, this principle does not apply if those elements are negligible, as was the case here.
The Board held that the verbal element was a completely negligible element of the Mark given its size and visibility and that a significant proportion of consumers would not be able to identify it without significant effort.
2. The visual element
The Board assessed whether the Mark departed in any significant way from the norms and customs of the relevant market sector and concluded that it contained all the essential elements ordinary consumers would expect from a virtual firearm in the market.
Therefore, the Board held that Colt had 'not demonstrated in any way that it would not be a sign which, naturally and automatically, without any further thought, is a typical representation of a rifle, whether virtual or real, by consumers'.
Distinctiveness in the eyes of the Relevant Public
The Board noted the starting position that the relevant public is primarily the general public, with the average consumer’s level of attention varying according to the goods or services concerned.
While the Board conceded that some members of the relevant public would have a wider knowledge of weapons (and virtual weapons), ultimately it concluded that it would not be appropriate to define the relevant public narrowly as such. This was particularly given the case that restraints placed on actual fire arms did not apply to virtual products (e.g. age restrictions to purchase), making them ultimately more widely accessible.
The EUIPO makes clear that firearm brands will need to meet a high bar in demonstrating “distinctive character” to obtain trade mark protection for the appearance of their weapons. For first-person shooter game developers, this decision will provide reassurance that the inclusion of weapons will not necessarily require a trade mark licence, particularly where the developers use invented brand names for their in-game replica weapons.
However, it remains important to consider whether a brand owner can protect the appearance of their weapons under copyright law or has registered the shape of the weapon as a design before ruling out the need for licensing altogether. Proposed changes to the EU designs framework, to expand the definition of products to explicitly recognise objects materialised in a digital form, may make design protection more significant here.
While uncommon, there have been reports of weapon manufacturers copying the appearance of in-game firearms and releasing them as real-life weapons. Video game developers should therefore consider the protection of their own original virtual weapon designs, both to protect against infringement risks from weapon manufacturers and to support subsequent licensing deals with toymakers and other third-parties.