A case of trademark infringement and unfair competition

Today in our post we talk about an interesting case on a conflict case in the video game sector in which both trademark law and unfair competition issues are intertwined.

COMUNIO is football videogame that was originally developed in Germany in 2000 and, after its great success, spread to leagues in many other countries, including Spain, where it has gained significant fame.

The game enable the player to act as a coach in charge of managing his team within a set maximum budget. There are several game modes, from the free “Basic Player” to the paid versions “Plus Player” and “Pro Player”.

The peculiarity of this game lies in the scoring system based on the real market value of the football players. In short, as a coach, the gamer must compose his team, signing real players from the league of the country where he plays. At the end of each real match, the players are rated accordingly to the number of goals scored, yellow and red cards received, or the score given by the sports diaries. These points are assigned to the gamer depending on the football players they have in their “COMUNIO” team. The more high-scoring football players the gamer has in his team, the higher his score will be, ultimately leading him to victory.

In August 2005, the creator of the game applied to the European Intellectual Property Office (EUIPO) for the registration of the European Union Trade mark “COMUNIO”, which was granted on 21 September 2006.

However, in March 2015, a group of video game developers launched the game “COMUNIAME” which offered the same experience as the “COMUNIO” game but without restrictions and with the same scoring mechanics.

These developers applied for the trademark “COMUNIAME” before the Spanish Patent and Trademark Office (SPTO) on 29 August 2015, which led the proprietor of the Community trademark “COMUNIO” to file an opposition before that Office.

In a surprising decision, the SPTO rejected the opposition and granted the trademark “COMUNIAME”, stating that the two were different.

In response, an appeal was lodged in which the proprietor of ‘COMUNIO’ established the existence of word identity between the two trade marks, as well as a clear likelihood of confusion. They also considered that the proprietors of ‘COMUNIAME’ had acted in bad faith by taking advantage of the popularity of ‘COMUNIO’, thereby giving rise to unfair competition.

The proprietors of ‘COMUNIAME’ counterclaimed that the two trade marks were visually and functionally different and that the appeal should not, therefore, be upheld.

The No. 1 European Union Trademark Court of Spain, in its judgment dated 17 September 2018 considered that the trade marks “COMUNIO”, and “COMUNIAME” did show similarity between the signs, in addition to the identity of the application, as both were registered to identify an online football management game.

Furthermore, the judgment held, it was likely to cause a likelihood of confusion in the average consumer who is reasonably well-informed and reasonably observant, and circumspect.

As regards unfair competition, the Court ruled that it existed despite the fact that from 2016 onwards the “COMUNIAME” game introduced certain variations or modifications in the score calculation system, although at the beginning it shared the same game system, market value and points calculation system, similarities which, according to the Court, could not imply “an overcoming of the unfair conduct” and described the “COMUNIAME” game as an “imitation“.

The judgment elaborates upon this further, stating that, according to case law, for unfair competition to exist, three requirements must be met, which in the case in question are fulfilled: (i) the existence of an imitation consisting of a copy of an essential element or aspect; (ii) the existence of imitation with respect to the object of protection; (iii) the requirement of suitability to generate association on the part of consumers with respect to the service or to take unfair advantage of another’s reputation or effort.

Subsequent to this fully upheld ruling, the owners of “COMUNIAME” lodged an appeal and on 10 May 2019, the Provincial Court of Alicante handed down its decision.

The noteworthy aspect of this second decision is that the subject matter of the appeal did not include the existence of the trade mark infringement found at the first instance and was limited to the examination of the defendants’ passive standing and the assessment of the evidence of the acts of unfair competition.

In other words, the owners of “COMUNIAME” argued that they could not be sued personally, since all the rights had been transferred to the company “IDEATIC”, which the judgment quickly rejected, as well as the rest of the claims, taking as its own the arguments put forward at first instance.

A very interesting case that highlights trademark distinctiveness considerations, as well as the keys to assessing the existence of unfair competition.