Esport is defined as “the competitive practice of multiplayer video games, within the framework of online leagues or competitions or physical events, essentially between professional players”.
Face-to-face events require equipment for each player and a playing area in which the players move around, as is the case for shooting games in particular.
These games attract large numbers of spectators, on Twitch and Youtube for online games, and in halls or stadiums for physical games.
In view of the growing esport market, the various players in the esport industry must take the utmost care to protect their intellectual property rights, and in particular their trademarks, designs and copyrights.
This applies in particular to game creators, competition organizers, professional players’ team clubs and their sponsors, but also to companies whose products are generally used in physical sports.
Video game creators will need to protect not only the trademarks and logos that identify the game, but also the names of the main characters, as well as those of significant objects used in the game, such as the names of vehicles or weapons, to hedge against their use by unauthorized third parties not only in the virtual realm but also in the real world.
Conversely, they must ensure that their trademarks and designs contained in the game do not infringe on real product protected by other trademarks and models.
For example, in the specific case of replica weapons used in a shooting simulator, the Paris Court of Appeal, Pole 5, Ch. 1 in its ruling of November 29, 2023 (no. 21/22461, Cybergun, FN Herstal c/ DM Diffusion) considered that “replica weapons in class 28 are similar to the ‘firearms, ammunition and projectiles, assault rifles’ of the trademark SCAR no. 213 in that replica weapons and their accessories on the one hand, and real weapons and their accessories on the other, have a common clientele, namely police officers, gendarmes, military and security professionals who use replica weapons in place of real weapons for training and operational simulation purposes, that replica weapons are as faithful reproductions of real weapons as possible, and that distribution channels are partly common, with trade shows hosting manufacturers of real weapons alongside manufacturers of replica weapons”.
The creator of the video game will also have to protect the game’s elements as designs or figurative trademarks, even when combined with a copyright, especially as they will constitute the visual elements of the game universe shown on screen during esport competitions.
Designs can be registered for the equipment used in the game (rackets, bows, firearms, balls, bicycles, cars, etc.), as well as for the game worlds in which players play, provided they are new and have an individual character.
However, the simple transposition of a real object, which has already been disclosed, into the virtual world is not protectable if the virtual object is identical or produces the same overall impression on the informed user.
For example, a design registration for one of the candies used in the Candy Crush ® game was declared invalid for lack of individual character due to its resemblance to a commercially available candy (EUIPO Board of Appeal, 01/12/2016, R 1948/2015-3).
Competition organizers, professional gamers’ team clubs and their sponsors will also have to protect their trademarks for products and services specific to the esport industry, i.e. for the fields of electronics, games and sports.
Finally, companies whose products are generally used in real sports may have an interest in licensing their trademarks and designs for real products to the creator of the video game, so that these can be used in the game to give an impression of reality.
The license agreement must notably specify:
- The conditions of use of the trademark and/or design in the video game, so that it is seen by players and its representation in the game is not denigrating or demeaning;
- The circumstances and game phases in which the trademark or design will appear;
- Regular checks to ensure that the conditions for use of the trademark or design are respected (in particular, by sending the owner test versions of the game before it is marketed).
Conclusion
To play it right, players must secure their rights.
The Lavoix teams are available to advise you on how to protect your trademark and to help you draw up contracts.