Insights A Cautionary Trade Mark Tale for Game Developers

The video game developer, Fntastic announced yesterday that it is delaying the release of its game “The Day Before” because a third party has already secured the corresponding US trade mark registration for that name.

According to an official statement by Fntastic, at the time its new game was announced in January 2021 the trade mark for the game name was available. However, in May 2021 a US trade mark for ‘The Day Before’ was subsequently filed by an individual, Sun Jae Lee, covering, amongst other goods, ‘computer game software.’  Fntastic’s statement indicates it only became aware of this US mark earlier this month.

In fact, Mr Lee had also applied to register the same trade mark in Singapore, (Fntastic’s country of origin) in May 2021. Before that, in 2015 Mr Lee had also successfully registered ‘The Day Before’ trade mark in South Korea, (Mr Lee’s country of origin), covering the computer game goods. Mr Lee’s initial interest in the name therefore appears to be significantly earlier than the date of Fntastic’s new game announcement, even though the later US and Singapore filings were made after that.

Fntastic did apply to register its own ‘THE DAY BEFORE’ marks in January 2022 in both Singapore and the US.  However, a simple trade mark search would have notified Fntastic of Mr Lee’s earlier identical marks in each of these countries and Mr Lee’s earlier registrations therefore represent a clear infringement risk to any use of the mark by Fntastic in these jurisdictions, as well as South Korea.

In response to Fntastic’s announcement, some commentators have questioned if this apparent trade mark conflict is the sole reason for the latest delay to the launch of ‘The Day Before’ game. However, even if there are other factors in play, this situation highlights the importance of checking and securing registered trade mark protection for important game titles.

Key takeaways from this cautionary tale for those in the video games and wider entertainment sectors are therefore to:

  • consider undertaking trade mark availability searches at an early stage of the development process so as to identify third party trade mark risk in good time to enable appropriate steps to be taken; and
  • where a chosen name looks to be clear on the registers, also consider obtaining registered trade mark protection in key territories in advance of any public announcement of the forthcoming title in order to reduce the risk of third parties subsequently securing registrations that will cause problems further down the line.